Appeal No. 1997-3441
Application No. 08/614,920
ordinary skill to implement an operative embodiment of the
claimed invention.
In view of the above, we find that the Examiner has not
established a reasonable basis for challenging the sufficiency
of the instant disclosure. Accordingly, we will not sustain the
rejection of claims 1-15 and 31 under the first paragraph of 35
U.S.C. § 112.
We will also not sustain the rejection of claims 1-15, 29,
and 31 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
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