Appeal No. 2001-0713
Application 09/016,304
outer electrodes are connected as claimed [reply brief,
pages 1-5].
We will not sustain the rejection of claim 3 for
essentially the reasons argued by appellant in the briefs. The
examiner’s “findings” are based on opinion, speculation and
conjecture. The disclosure of Ogawa simply does not disclose the
specific recitations of claim 3 which are argued by appellant.
We now consider the various 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
or knowledge generally available to one having ordinary skill in
the art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
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