Appeal No. 2002-1311
Application No. 09/042,291
rejections before us, appellant’s grouping will be accepted as a representation that all the claims
within each rejection will stand or fall together. Note In re King, 801 F.2d 1324, 1325, 231
USPQ 136, 137 (Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1, 3 (Fed. Cir.
1983). Accordingly, we will only consider the rejections against a single claim from each
separate rejection as representative of all the claims on appeal.
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 (Fed. Cir. 1992). If that burden is met, the burden then shifts to the applicant to overcome
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