Ex parte CORBIN et al. - Page 5




          Appeal No. 96-3293                                                          
          Application No. 08/261,645                                                  


          into consideration, in reaching our decision, the appellants’               
          arguments set forth in the briefs along with the examiner’s                 
          rationale in support of the rejections 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 1-5, 7, 8, 10-22, 25-27 and 37.                         
          Accordingly, we reverse.                                                    


          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                 
                                          5                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  Next 

Last modified: November 3, 2007