Ex Parte Countryman et al - Page 4



          Appeal No. 2003-0330                                                        
          Application No. 09/533,805                                                  
          particular art would not have suggested to one of ordinary skill            
          in the art the obviousness of the invention as set forth in the             
          claims on appeal.  Accordingly, we reverse.                                 
          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. 1988), 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.,             



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