Appeal No. 2002-0374 Page 4
Application No. 08/599,227
In reaching our decision in this appeal, we have carefully
considered the subject matter on appeal, the rejection advanced by
the examiner, and the evidence of obviousness relied upon by the
examiner as support for the rejection. We have, likewise, reviewed
and taken into consideration, in reaching our decision, appellants'
arguments set forth in the brief along with the examiner's
rationale in support of the rejection and arguments in rebuttal set
forth in the examiner's answer.
Upon consideration of the record before us, we reverse, essentially
for the reasons set forth by appellants.
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
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