Appeal No. 2002-1281
Application No. 08/857,711
and 19) which provided for both “identical” and “unique” codes.
Therefore, the codes may or may not be the same. Second, the
examiner’s rejection is clearly erroneous on its face. The
examiner indicates that appellants argued that the codes “need
not be the same” but claims 8 and 18 require the codes to be
identical. There is no contradiction here. While the codes are
required by claims 8 and 18 to be identical, the statement that
they “need not be the same” covers the situation where the codes
are identical as well as the situation where the codes are
unique, i.e., not identical. We find no indefiniteness or
contradiction of any kind.
Accordingly, the rejection of claims 8 and 18 under
35 U.S.C. § 112, second paragraph, is reversed.
Turning now to the rejection of all the claims under
35 U.S.C. § 103, we note that 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
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