Ex parte BEER et al. - Page 5




                 Appeal No. 1997-1199                                                                                                                   
                 Application No. 08/309,366                                                                                                             


                          The references relied on by the Examiner are:                                                                                 
                 Sanchez-Frank et al. (Sanchez-Frank) 5,394,522                                            Feb. 28, 1995                                
                                                                       (Filing date, Sep. 13,                                                           
                 1993)                                                                                                                                  
                 Tyne, Maria (Tyne), OS/2: The Workplace Shell, A User’s Guide                                                                          
                 and Tutorial for Release 2.0, (Computer Information                                                                                    
                 Associates, 1992), pp. 277-308.                                                                                                        
                          Claims 1, 5  to 14 and 18 to 27 stand rejected under2                                                                                                         
                 35 U.S.C.  103 over Tyne and Sanchez-Frank.                                                                                           
                          Reference is made to Appellants’ brief and the Examiner's                                                                     
                 answer for their respective positions.                                                                                                 
                                                                     OPINION                                                                            
                          We have considered the record before us, and we will                                                                          
                 reverse the rejection of claims 1, 5 to 14 and 18 to 27.                                                                               
                          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.                                                                         

                          2Note that in the claims attached to the brief as an                                                                          
                 appendix, dependence of claims 5 and 6 should be on claim 1,                                                                           
                 and that of claims 18 and 19 on claim 14, see amendment “A”                                                                            
                 (paper no. 4).                                                                                                                         
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