Appeal No. 1999-0427
Application 08/782,272
that it set forth exemplary ranges for the dimensions of the
microchannels, but the specification does not indicate that
the dimensions should be otherwise limited in any manner to
practice the invention. Therefore, we do not sustain the
examiner’s rejection of claims 1-37 as being based upon an
inadequate written description under the first paragraph of 35
U.S.C. § 112.
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 the art. Uniroyal, Inc. v. Rudkin-Wiley
8
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