Appeal No. 1998-2517
Application 08/317,129
invention as claimed.
In summary, we agree with appellants that Miyazaki does
not disclose every feature of the invention set forth in
claims 24, 25, 52, 53, 59 and 64. Therefore, the rejection of
these claims under 35 U.S.C. § 102 is not sustained.
We now consider the various rejections 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
as a whole or knowledge generally available to one having
ordinary skill in
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