Ex Parte YOSHIHARA et al - Page 4



          Appeal No. 2004-0045                                                        
          Application No. 09/044,421                                                  

                                       OPINION                                        
               We have carefully considered the subject matter on appeal, the         
          rejection advanced by the Examiner and the evidence of obviousness          
          relied upon by the Examiner as support for the rejection.  We have,         
          likewise, reviewed and taken into consideration, in reaching our            
          decision, Appellants’ arguments set forth in the Briefs along with          
          the Examiner’s rationale in support of the rejection and arguments          
          in rebuttal set forth in the Examiner’s Answer.                             
               It is our view, after consideration of the record before us,           
          that the evidence relied upon and the level of skill in the                 
          particular art would not have suggested to one of ordinary skill in         
          the art the obviousness of the invention as recited in claims 1, 2,         
          4-10, and 12-16.  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           
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