Appeal No. 1996-3591
Application No. 08/251,053
the rejection of claim 8, and claims 9-14 dependent thereon,
under the second paragraph of
35 U.S.C. § 112 is not sustained.
We now consider the 35 U.S.C. § 103 rejection of claims
1-15 as unpatentable over Iyengar and Masaki. 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 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
8
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007