Appeal No. 2001-1786
Application 08/420,796
obvious based on the examiner’s bare opinion which is unsupported
by any evidence on this record.
In summary, the examiner’s double patenting rejection
fails with respect to each of the independent claims on appeal.
Therefore, we do not sustain this rejection with respect to any
of the claims on appeal.
We now consider the rejection of claims 28, 30-35 and 37-
47 under 35 U.S.C. § 103 as unpatentable over the teachings of
Hirokawa in view of Sato, Francini and Berwick. 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.
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