Appeal No. 96-2120
Application 08/300,097
It is our view, after consideration of the record before us, that the evidence relied upon
and the level of skill in 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 15, 20
and 21. Accordingly, we reverse.
Appellant has nominally indicated that the claims on appeal do not stand or fall
together [brief, page 3]. However, appellant has made no separate arguments with
respect to independent claims 15 and 20. In fact, the brief states that claim 20 is
patentable for the same reasons as claim 15 [page 5]. Since appellant has failed to
appropriately argue the separate patentability of the claims, all contested claims stand or
fall together. See In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137
(Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
Accordingly, we will consider the rejection against claim 15 as representative of all the
claims on appeal.
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
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007