Appeal No. 1997-3479
Application 08/495,039
fails to establish a prima facie case of unpatentability of
the claimed invention under either the first or second
paragraph of 35 U.S.C.
§ 112. Since we readily find the disclosure of this
application and claims 21 and 23-25 to be in compliance with
Section 112, we do not sustain this rejection of the claims.
We now consider the rejection of claims 21 and 23-25
under 35 U.S.C. § 103. 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 (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
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