Appeal No. 2002-1672
Application No. 09/412,124
In view of the above discussion, since all of the claim
limitations are not present in the disclosure of either one of
Circello or Argade, we do not sustain the Examiner’s 35 U.S.C.
§ 102(e) rejections of independent claims 1 and 12, nor of claims
2, 4, 5, 17, 19, 20, and 22 dependent thereon.
We next consider the Examiner’s various 35 U.S.C. § 103(a)
rejections of the appealed claims. 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.
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