Appeal No. 1998-1926
Application 08/333,829
unique identification number of a document.
Since we agree with appellant that Stambler does not
contain every feature of independent claims 1, 8 and 13, the
rejection of these independent claims under 35 U.S.C. § 102 is
improper. Therefore, we do not sustain the rejection of any
of claims 1-3, 5-7, 13, 14, 16 and 17 as anticipated by the
disclosure of Stambler.
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
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
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