Appeal No. 2001-0877
Application 08/530,434
that the document height is corrected in accordance with document
position [reply brief, pages 6-7].
We will not sustain the rejection of claim 7. We agree
with appellants that Fujii does not have a document position
recognizing means for using a detected document position to
correct for the height of the document as measured by the height
detecting means. The Fujii device operates on the assumption
that a document has been properly placed against some reference
edge for copying. The portions of Fujii relied on by the
examiner fail to support the examiner’s findings that Fujii
teaches the height correction means as recited in claim 7.
We now consider the various rejections made by the
examiner 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
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