Ex Parte COLLINS et al - Page 9



          Appeal No. 1999-0865                                                        
          Application No. 08/468,573                                                  

          held that, in assessing patentability of a claimed invention, all           
          the claim limitations must be suggested or taught by the prior              
          art.  In re Royka, 490 F.2d 981, 983-84, 180 USPQ 580, 582 (CCPA            
          1974).  All words in a claim must be considered in judging the              
          patentability of that claim against the prior art.  In re Wilson,           
          424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970).                         
               Accordingly, since all of the limitations of claim 59 have             
          not been shown to be expressly disclosed or inherent in the                 
          Fessenden reference, the Examiner’s 35 U.S.C. § 102(b) rejection            
          of dependent claim 59 is not sustained.                                     
               We next consider the Examiner’s obviousness rejection of               
          claims 61-68 and 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. 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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