Appeal No. 96-1515
Application 08/161/859
In conclusion, we agree with appellants that the
original disclosure provides clear support for the invention
now being claimed. Accordingly, we do not sustain the
examiner’s rejection of claims 1, 5, 15 and 28 based on the
first paragraph of
35 U.S.C. § 112.
We now consider the rejection of the claims based on
the prior art. 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 deter-
minations 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
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
9
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