Ex Parte RICHARDS et al - Page 5



          Appeal No. 2003-1659                                                        
          Application No. 09/193,662                                                  

          before us, we agree with appellants that the examiner’s rejection           
          on anticipation is not supported by the applied reference.                  
          We now consider the rejection of claims 1-6 and 11-37 under                 
          35 U.S.C. § 103 based on Anderson and Vak.  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                    
                                          5                                           




Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007