Ex parte HAN et al. - Page 3




          Appeal No. 1998-2596                                                        
          Application 08/522,222                                                      


          appeal, the rejection advanced by the examiner and the                      
          evidence of obviousness relied upon by the examiner as support              
          for the rejection.  We have, likewise, reviewed and taken into              


          consideration, in reaching our decision, the appellants’                    
          arguments set forth in the briefs along with the examiner’s                 
          rationale in support of the rejection 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 1-27.  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                


                                          3                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007