Appeal No. 2001-1186
Application No. 08/819,609
We reach the opposite conclusion with respect to the Examiner’s
obviousness rejection of claims 16, 19, and 20. Accordingly, we
affirm-in-part.
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 pages
6 and 7 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,
17-18, 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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