Ex parte ONO et al. - Page 4




          Appeal No. 96-2224                                                          
          Application No. 08/047,498                                                  


          consideration, in reaching our decision, the appellants’                    
          arguments set forth in the brief along with the examiner’s                  
          rationale in support of the rejection and arguments in                      
          rebuttal set forth in the examiner’s answer.                                
          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 2-4.  Accordingly, we reverse.                          
          We now consider the rejection of claims 2-4 under                           
          35 U.S.C. § 103 as unpatentable over the teachings of Kane in               
          view of Takahashi.  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 having ordinary skill in the pertinent art would have been              
          led to modify the prior art or to combine prior art references              
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