Ex Parte Lee - Page 4



          Appeal No. 2003-1551                                                        
          Application No. 09/550,713                                                  

          rejections.  We have, likewise, reviewed and taken into                     
          consideration, in reaching our decision, the appellant’s                    
          arguments set forth in the briefs along with the examiner’s                 
          rationale in support of the rejections and arguments in rebuttal            
          set forth in the examiner’s answer.                                         
          It is our view, after consideration of the record before                    
          us, that the rejection as formulated by the examiner is not                 
          supported by the evidence of record.  Accordingly, we reverse the           
          examiner’s rejection.  Using our authority under 37 CFR                     
          § 41.50(b), however, we enter a new ground of rejection of                  
          independent claims 1, 7 and 9.                                              
          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             
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