Appeal No. 1998-0828
Application 08/438,091
guide arm 21 or load arms 22 and 22'. The claimed invention
permits the microcontroller to control movement of the air
bearing right at the location of the air bearing. The
“microcontroller” of Mori can not accomplish this operation.
Since there is at least one feature of the claimed invention
which is not disclosed in Mori, we do not sustain this rejection
of claims 19, 21, 22 and 24.
We now consider the various rejections 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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