Appeal No. 2000-1890
Application 08/828,297
location of the second torsion node, however, can be determined
for a given suspension. Claims 13-15 require that the mass
balancing structures (tabs) be placed at a specific point on the
suspension related to the determined location of the second
torsion node. This is a structural requirement which the
examiner dismisses based on pure speculation. There is no
evidence within Hinlein that the tabs can be structurally located
as recited in claims 13-15. A rejection based on anticipation
cannot be established based upon conjecture and speculation.
Therefore, we do not sustain the rejection of claims 13-15.
We now consider the rejections of the claims 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
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