Appeal No. 1998-2557
Application No. 08/335,550
a position that the encoding scheme disclosed by Gerard
inherently or implicitly results in the encoding of claims 26
and 33 taking place. We are unable to find any evidence on
this record which supports this position of the examiner.
For reasons set forth by appellant in the brief, the
examiner has mischaracterized the teachings of Gerard and/or
misapplied those teachings in rejecting the claimed invention.
Since we agree with appellant that Gerard does not fully meet
the invention as set forth in claims 26 and 33, we do not
sustain the rejection of these claims under 35 U.S.C. § 102.
We now consider the 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
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