Appeal No. 2001-2209
Application No. 09/019,158
It is our view, after consideration of the record before us, that the evidence relied upon and
the level of skill in the particular art would not have suggested to one of ordinary skill in the art the
invention as set forth in claims 14 and 17-19. Accordingly, we reverse.
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 (1988);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert.denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed.Cir. 1984). These showings by the Examiner are an essential
partof complying with the burden of presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
With respect to independent claim 14, the Examiner, as the basis for the obviousness
rejection, proposes to modify the disclosure of Appellants’ admitted prior art semiconductor light-
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