Appeal No. 1996-3860
Application 08/312,819
differences between the claims and the disclosure of Sauter, one would expect the
examiner to set forth a detailed statement of a rejection explaining why Sauter exactly
describes the rejected claims. This has not happened. Accordingly, we reverse the
rejection under 35 U.S.C. § 102(b) based upon Sauter.
The examiner has not begun to establish a credible basis for the alternative §103
rejection. The examiner stated at page 6 of the first Office action (Paper No. 4, March 6,
1995) that “any conceivable differences which might exist between the claimed/envisioned
invention and sauter[sic] being held/seen NOT to constitute patentable differences.”
Suffice it to say the Examiner’s Answer does not further explain the examiner’s position.
The alternative rejection under 35 U.S.C. § 103 is reversed.
Rejection V.
Claims 12 and 15 stand rejected under 35 U.S.C. ' 103 over Sauter in view
of Barshay. We reverse.
Obviousness is a legal conclusion based upon underlying factual inquiries. Graham
v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966); In re Fritch, 972 F.2d at
1265, 23 USPQ2d at 1783.
For us to review a rejection under 35 U.S.C. ' 103, it is incumbent upon the
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