Appeal No. 1997-2760
Application No. 08/302,133
application. Therefore, we do not sustain the rejection of
claims 2-5, 7, and 10-14 under the first paragraph of 35
U.S.C. § 112.
We will also not sustain the rejection of claims 2-5, 7,
and 10-14 under 35 U.S.C. § 103. The Examiner has failed to
set forth a prima facie case of obviousness. 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 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. 825 (1988); Ashland Oil, Inc. v. Delta Resins
8
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