Appeal No. 2001-0079
Application No. 09/092,702
Appellants’ arguments in response to the Examiner’s
obviousness rejection of the appealed claims are organized
according to a suggested grouping of claims indicated at page 4
of the Brief. We will consider the appealed claims separately
only to the extent separate arguments for patentability are
presented. Any dependent claim not separately argued will stand
or fall with its base claim. Note In re King, 801 F.2d 1324,
1325, 231 USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702
F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir. 1983).
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, 1073-74, 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 Corp., 837 F.2d 1044,
4
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