Appeal No. 1997-0202
Application No. 08/247,709
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 9, 11, 12,
16, and 17. We reach the opposite conclusion with respect to
claims 2-5, 35, and 39. Accordingly, we affirm-in-part.
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.,
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