Appeal No. 2000-1309
Application No. 08/821,938
reference to the brief and the answer for the respective details thereof.
OPINION
We have carefully considered the subject matter on appeal, the rejections
advanced by the examiner and the evidence of anticipation and obviousness relied
upon by the examiner as support for the rejections. We have, likewise, reviewed and
taken into consideration, in reaching our decision, the appellant’s arguments set forth in
the brief along with the examiner’s rationale in support of the rejections 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 does not support any of the rejections made by the examiner. Accordingly, we
reverse.
We consider first the rejection of claims 1-20 and 22-25 under 35 U.S.C. § 103
based on Glaser and Maturi. 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
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