Ex parte HURST et al. - Page 8




          Appeal No. 1998-2556                                                        
          Application 08/571,044                                                      


          Grotz disclosure, we do not sustain the examiner’s                          
          anticipation rejection of claim 1 or of claims 2, 4, 5, 8, 10,              
          12, 14 and 15 which depend therefrom based on the Grotz                     
          disclosure.                                                                 
          We now consider the various rejections of the claims                        
          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 the art.  Uniroyal, Inc. v.                 
          Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438                
          (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil,                
          Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,               
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