Appeal No. 2002-0831
Application 08/250,286
where the claimed invention is supported, and appellants argue
that the examiner has presented no evidence as to why persons
skilled in the art would not recognize in the disclosure a
description of the invention defined by the claims [reply brief,
pages 6-15].
We will not sustain this rejection of the claims for
essentially the reasons argued by appellants in the briefs. The
examiner’s primary concern appears to be whether the manual
switches are used to define different appliance environments as
claimed. The specification describes the switches SW1-SW3 as
offering 512 possible switch settings which an installer or user
of the motor can select [page 10]. The specification also
describes that a single motor can be used in a wide variety of
applicational uses merely by altering the switch positions of the
switches 20 [page 12]. We agree with appellants that the
original specification provides support for the invention now
being claimed.
We now consider the rejection of the claims on appeal
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).
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