Appeal No. 1997-0344
Application 08/326,992
OPINION
It is our view, after consideration of the record before us, that the examiner has failed to make
out a prima facie case of obviousness under 35 U.S.C. § 103. In reaching our conclusion
on the issue raised in this appeal, we have carefully considered appellant’s specification and claims, the
applied references, and the respective viewpoints of appellant and the examiner. As a consequence of
our review, we find that the examiner has failed to meet his burden of adequately showing that Swartz in
view of Hunt and Blanford taught or would have suggested the combination of features of claims 1 to
14 on appeal of a price maintenance system and method. Accordingly, we will reverse the examiner’s
decision rejecting claims 1 to 14 on appeal as being obvious 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
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