Appeal No. 1997-3161
Application No. 08/450,553
(i.e. Dockerty and Anantha) in fact use Appellant’s
definition. For the above reasons, it is our view that the
skilled artisan, having considered the specification in its
entirety, would have no difficulty ascertaining the scope of
the invention recited in the claims on appeal. Therefore, the
rejection of independent claims 43 and 51, and claims 6-9, 45,
46, and 52-57 dependent thereon, under the second paragraph of
35 U.S.C. § 112 is not sustained.
Turning to a consideration of the obviousness rejection
of the appealed claims, we note that in rejecting claims under
35 U.S.C. § 103, it is incumbentupon 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
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
12
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007