Ex Parte RAPP et al - Page 4



          Appeal No. 2003-0873                                                        
          Application No. 08/896,245                                 Page 4           

          examiner's rationale in support of the rejections and arguments             
          in rebuttal set forth in the examiner's answer.                             
               We begin with the rejection of claims 3-5 and 8 under                  
          35 U.S.C. § 103(a) as being unpatentable over Smith.  We turn               
          first to independent claim 8.                                               
          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); Ashland Oil, Inc. v. Delta Resins &                  
          Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.              
          Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d              
          1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).  These showings             





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