Appeal No. 1999-0409
Application 08/425,741
examiner [reply brief]. The question of the propriety of
making an Office action final, however, is not within our
jurisdiction. We only decide if rejections have been properly
made. The proper way for an applicant to contest a premature
final rejection is to
petition the Commissioner under 37 CFR § 1.181. Thus, we do
not rule on this question.
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 the art. Uniroyal, Inc. v. Rudkin-Wiley
-4-
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