Ex Parte DEATON - Page 12




          Appeal No. 2004-0786                                                        
          Application No. 08/935,116                                Page 12           


               We turn next to the rejection of claims 15 and 16 under 35             
          U.S.C. § 103(a) as being unpatentable over Creekmore in view of             
          Off.  Appellants assert (brief, page 18) that claims 15 and 16              
          stand or fall together.  Accordingly, we select claim 15 as                 
          representative of the group.  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 by the examiner are an essential part of complying           







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