Appeal No. 1996-2214
Application No. 08/208,123
suggested by the prior art is more likely to be unobvious than obvious within the meaning
5
of § 103.” See In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA 1972).
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 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.), cert. denied, 475 U.S. 1017 (1986); ACS Hosp. System., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by
the examiner are an essential part of complying with the burden of presenting a prima facie
case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
5See footnote 2.
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