Appeal No. 1999-0153
Application No. 08/488,394
rejection and arguments in rebuttal set forth in the
Examiner’s Answer.
It is our view, after consideration of the record before
us, that the evidence relied upon and the level of skill in
the particular art would not have suggested to one of ordinary
skill in the art the obviousness of the invention set forth in
claim 1. Accordingly, we reverse.
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, 17-18, 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-
4
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