Appeal No. 1997-2036
Application No. 08/335,991
chambers. Accordingly, Blanks does not cure the deficiencies
of Brown.3
Furthermore, 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, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). In so doing, the examiner is required to provide a
reason why one having ordinary skill in the pertinent art
would have been led to
modify the prior art 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, 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1438 (Fed.
Cir. 1988), cert. denied, 488 U.S. 825 (1988). These showings
by the examiner are an essential part of complying with the
burden of presenting a prima facie case of obviousness. Note
We note that Dion was added in the rejection of claim 3. However,3
since claims 1 through 3 have been grouped together, and appellant has not
provided any arguments as to the applicability of Dion, we will not discuss
Dion further in this decision.
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