Appeal No. 96-1183
Application 08/102,858
the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 1-5, 9-11 and 15. Accordingly, we reverse.
We consider first the rejection of claims 1-3, 9-11 and
15 under 35 U.S.C. § 103 as being unpatentable over the
teachings of Christie in view of Ikedo and Rached. In
rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set
forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (CCPA 1966), and to provide
a reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
prior art references to arrive at the claimed invention. Such
reason must stem from some teaching, suggestion or implication
in the prior art as a whole or knowledge generally available
to one having ordinary skill in the art. Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438
(Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007