Ex parte SHEN et al. - Page 4




          Appeal No. 1997-0197                                                        
          Application No. 08/195,676                                                  


          of obviousness relied upon by the Examiner as support for the               
          rejection.  We have, likewise, reviewed and taken into                      
          consideration, in reaching our decision, Appellants’                        
          arguments set forth in the Briefs 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 collective                  
          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,              
          3-7, and 9-12.  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 (1966), and to provide a reason why one               
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