Ex parte IWAMURA et al. - Page 5




          Appeal No. 1997-3145                                       Page 5           
          Application No. 08/058,199                                                  


          skill in the art the invention as set forth in the claims.                  
          Accordingly, we reverse.                                                    
               We consider first the rejection of claims 5-12, 14-20,                 
          22-26, and 31-36  based on the teachings of Hama, Berry, and                
          Waller.                                                                     
          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. 1988); Ashland Oil, Inc.               
          v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227                







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