Appeal No. 1997-3960
Application 08/249,700
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 12 and 14. Accordingly, we reverse.
Appellant has indicated that for purposes of this appeal
claims 12 and 14 will stand or fall together as a single group
[brief, page 4]. Consistent with this indication appellant has
made no separate arguments with respect to either of the claims
on appeal. Accordingly, claims 12 and 14 will stand or fall
together. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136,
137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ
1, 3 (Fed. Cir. 1983). Therefore, we will consider the rejection
against independent claim 12 as representative of both of the
claims on appeal.
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
4
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