Ex parte MIZOGUCHI et al. - Page 5




          Appeal No. 1997-0811                                                        
          Application No. 08/240,554                                                  
          before us, that the evidence relied upon and the level of                   
          skill in the particular art would not have suggested to one of              
          ordinary skill in the art the obviousness of the invention as               
          set forth in claims 1-4 and 6-18.  Accordingly, we reverse.                 
          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.                                                            
                                          5                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  Next 

Last modified: November 3, 2007