Appeal No. 96-2161
Application 08/227,024
(Fed. Cir. 1983). Accordingly, we will consider the rejections against a single claim from
each separate rejection as representative of all the claims on appeal.
We consider first the rejection of claims 1-4 and 8 under 35 U.S.C. § 103 as
unpatentable over Kraft or Kraft in view of Green. 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, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp.
Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). These showings by the examiner are an essential part of complying with the burden
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