Ex Parte HELSEL et al - Page 6



         Appeal No. 2003-0212                                       Page 6          
         Application No. 09/089,053                                                 
         We agree with the examiner that this operation fully meets the             
         invention as recited in claim 1.                                           
         We now consider the rejection of claims 7-12 under 35                      
         U.S.C. § 103(a) based on Meyer.  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 part of 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              







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