Appeal No. 1997-0339
Application 08/330,768
2, 4 and 5 with claim 1, claims 7 to 9 with claim 6, and
claims 11, 14 to 16 with claim 10. Claims 1, 3, 6, 10, 12 and
13 are argued separately.
We note that all the claims are rejected 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
(CCPA 1966), and to provide a reason why one having ordinary
skill in the pertinent art would have been Ledbetter 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
-3-
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