Appeal No. 96-3992
Application 08/356,618
differentiate the claimed structure from prior art which meets the structural requirements. We are in
agreement with the Examiner. There are no reasons on the record before us, and Appellant has
provided none, to question the Examiner’s position that Kato’s reinforcing layer 18 functions as a
release agent barrier. As the Examiner has concluded, whether release agent is intended to flow into or
from such barrier is irrelevant in a claim drawn to the structure of a donor brush. Accordingly, the
Examiner’s rejection of claim 5 as anticipated by Kato is sustained. Further, since dependent claims 9-
11 stand or fall with independent claim 5, the rejection of claims 9-11 is sustained as well.
We now consider the 35 U.S.C. § 103 rejection of independent claim 1 as being unpatentable
over the combined teachings of Fromm and Kato. 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
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