Appeal No. 96-1286
Application 08/259,360
A reversal is not an affirmative indication that the
claims on appeal are patentable over prior art, even those
cited and applied by the examiner. We focus only on the
examiner’s rationale and stated position for rejecting these
claims.
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 (1966), and to provide a reason why
one with ordinary skill in the art would have been led to
modify or combine prior art references to arrive at the
claimed invention. Such reasons must stem from some teaching,
suggestion, or implication in the prior art as a whole or
knowledge generally possessed by one with 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, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
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