Appeal No. 1999-0063
Application No. 08/602,366
29, lines 9-16 in connection with Figures 18A-18D, 19A-19C,
and 20A-20C also provides a clear description of the “travel
request signal” language. Accordingly, we find Appellant to
be correct in the assertion that the originally filed
disclosure provides written description support for the
invention as claimed and, therefore, the Examiner’s rejection
of claims 16-25 under the first paragraph of 35 U.S.C. § 112
is not sustained.
We will also not sustain the rejection of claims 16-25
under 35 U.S.C. § 103. The Examiner has failed to set forth a
prima facie case of obviousness. 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 (CCPA 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
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