Appeal No. 2004-0716 Page 4
Application No. 09544,275
We note at the outset that appellants assert (brief, page 4)
that claims 1-16 stand or fall together and that claims 17 and 18
form a separate group which stand or fall together. Because
appellants are entitled procedurally to review of at least one
claim for each ground of rejection, we select claim 1 as
representative of the group of claims rejected over Sawyer, and
select claim 18 as representative of the claims rejected over
Sawyer in view of Brakefield.
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 &
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