Appeal No. 2004-1461
Application No. 09/461,883
with respect to the dependent claims, the dependent claims will
stand or fall with the claims from which they respectively
depend. Note In re King, 801 F.2d 1324, 1325, 231 USPQ 136, 137
(Fed. Cir. 1986); In re Sernaker, 702 F.2d 989, 991, 217 USPQ 1,
3 (Fed. Cir. 1983).
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), cert. denied, 488
U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc.,
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007