Appeal No. 1998-2570
Application No. 08/381,156
skill in the art the obviousness of the invention as recited
in claims 13, 14, 18, and 19. We are also of the view that
the Sampsell reference does not fully meet the invention as
set forth in claims 15-17. Accordingly, we reverse.1
We consider first the Examiner’s 35 U.S.C. § 103
rejection of claims 13 and 14 as being unpatentable over
Nathanson in view of Schell. 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
1 We decline Appellant’s request (Brief, page 11) to enter a new ground
of rejection of claim 17 under 37 CFR § 1.196(b) since, in our view, Appellant
has not provided sufficient reasons for us to do so. We would point out,
however, that, in view of our decision in this appeal, the Examiner may wish
to reconsider the decision not to enter the amendment after final filed August
7, 1997 (Paper No. 12)
5
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