Appeal No. 96-1763
Application No. 08/056,941
The Examiner disregards the arguments by appellants by stating that they are "pro-
forma," etc., rather than clearly setting forth the factual basis and reasoning for the
Examiner's contrary positions. (See answer at pages 6-10 and entire supplemental
answer.) Appellants have argued that the Examiner has not provided a proper motivation
to combine the teachings of the references applied against the claims. We agree.
Furthermore, we conclude that the combination does not teach the claimed subject matter
as asserted by the Examiner in the final rejection, the answer and the supplemental
answer. 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, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). We cannot determine
from the answer or the supplemental answer, the propriety of the Examiner's position
based on the factual basis set forth by the Examiner regarding the rejection of the claims
apart from the mere conclusions espoused by the Examiner. Therefore, we hold that the
Examiner has not met the initial burden of establishing a prima facie case of obviousness.
See In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).
Since all the limitations of independent claim 1 are neither taught nor suggested by
the applied prior art, we cannot sustain the Examiner's rejection of appealed claim 1
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