Appeal No. 2003-0724
Application 08/858,809
Suzuki 5,485,175 Jan. 16, 1996
eff. filing date Dec. 12, 1990
Claims 41, 42, 45 and 46 stand rejected under 35 U.S.C. § 103 as unpatentable
over Seki in view of Suzuki.
Claims 23, 29, 37, 39, 49 and 50 stand rejected under 35 U.S.C. § 103 as
unpatentable over Yoshida in view of Seki and Suzuki.
Reference is made to the briefs and answer for the respective positions of
appellants and the examiner.
OPINION
At the outset, we note that this case is related (a parent application) to
Application Serial No. 09/407,069, and a decision (Appeal No. 2002-0641) on appeal
has been made in the continuation case.
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 much
stem from some teachings, suggestions or implications 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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