Appeal No. 96-4001
Application 08/246,805
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, 6, 18, 20, 21, 26-28, 42, and 43. Accordingly,
we reverse.
Appellant has indicated that for purposes of this appeal the claims will all stand or fall together
as a single group [Brief, page 7]. Consistent with this indication Appellant has made no separate
arguments with respect to any of the claims on appeal. Accordingly, all the claims before us will stand
or fall together. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re
Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983). Accordingly, we will only consider
the rejection against independent claim 1 as representative of all the claims on appeal.
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);
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