Ex parte DEGUCHI - Page 6




          Appeal No. 1998-1320                                                        
          Application No. 08/305,643                                                  


          Appellant’s arguments set forth in the Briefs along with the                
          Examiner’s rationale in support of the rejections and                       
          arguments in rebuttal set forth in the Examiner’s Answers.                  
               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 invention set forth in claims 1-18.                    
          Accordingly, we reverse.                                                    
               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                                                                      
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