Appeal No. 1998-1251
Application 08/521,393
inductively sensing the presence of the magnetic field about the
shield at a second location displaced along the axis of the shield and separated from the
first location;
detecting a disturbance in the magnetic field at the second location by
comparison with the source electrical signal current; and
indicating the existence of said magnetic field disturbance.
Opinion
The rejection of claims 1-15 cannot be sustained. We reverse.
A reversal of any rejection on appeal should not be construed as an affirmative
indication that the appellant’s claims are patentable over prior art. We address only the
sufficiency of the findings and rationale as set forth by the examiner and on which the
examiner’s rejection is based.
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 with ordinary skill
in the art would have been led to modify or combine prior art references to arrive at the
claimed invention. Such reasons must stem from some teaching, suggestion, or
implication in the prior art as a whole or knowledge generally possessed by one with
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5
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