Appeal No. 97-0801
Application 08/168,087
Although the examiner attempts to view the claimed recitation as inherent in Shen, such inherency is
clearly not present. The examiner may view storing in two locations as meeting storing in one location,
but storing in two locations cannot meet storing in only one location as recited in claim 1. Therefore,
Shen fails to disclose the limitations as recited in claim 1, and the Shen operation precludes the inherent
disclosure of these limitations as argued by the examiner. Since Shen fails to disclose at least one
limitation recited in claim 1, we do not sustain the rejection of claims 1 and 5 as anticipated by Shen.
We now consider the rejection of claims 2-4 and 6-8 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, 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 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
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