Appeal No. 2000-2194
Application No. 08/705,843
the skilled artisan would recognize and appreciate that if the
connection between the coin counter and lock memory were not
independent, a position taken by the Examiner, there would be no
need to load the information from the key memory back into the lock
device. In other words, if the lock memory already has the coin
collecting information through a dependent connection with the coin
counter mechanism, the loading of such information from the key
back into the lock memory would be unnecessary.
In our opinion, under the factual situation presented in the
present case, Appellants have satisfied the statutory written
description requirement because they were clearly in possession of
the claimed invention at the time of filing of the application.
Therefore, the Examiner’s rejection of claims 6-12, 14, and 15
based on the “written description” requirement of the first
paragraph of 35 U.S.C. § 112 is not sustained.
Turning to a consideration of the Examiner’s rejection of
appealed claims 1-5 and 13 under 35 U.S.C. § 103(a), we note that
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.
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