Appeal No. 1997-0500
Application 08/404,704
examiner’s position that the claims are unduly multiplied, we
have no jurisdiction to decide this question. Our
jurisdiction is limited to the rejection of claims. This
issue must be resolved with the examiner and petition to the
Commissioner if necessary. Thus, we have no additional comment
on the examiner’s objection of the claims.
Therefore, we only consider the rejection of the
claims under 35 U.S.C. § 103. 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,
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