Appeal No. 1998-0878
Application No. 08/322,749
rationale in support of the rejections and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention as set forth
in claims 2-29. Accordingly, we reverse.
We consider first the rejection of claims 2-5, 8-15, 18-
21 and 24-29 under 35 U.S.C. § 103 based on the teachings of
Suwa and Hosio. Of these claims, claims 2-4, 8-10, 12, 13,
18-21 and 24-27 stand or fall together as a single group
[brief, page 7]. We will consider the rejection with respect
to independent claim 10 as representative of all the claims in
this group.
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
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007