Appeal No. 2004-2110
Application No. 09/910,654
discloses that agent coupon data should be stored in optical
form. The attempt by the examiner to read electronic storage of
coupon data into the ARC disclosure is based on speculation.
Although the examiner has given reasons why the electronic
storage of the coupon data would have been obvious to the artisan
in view of ARC, the rejection before us is based on anticipation
and not on obviousness. We address this question of obviousness
in our new ground of rejection set forth below.
We now consider the rejection of claims 1-15, 17 and 18
under 35 U.S.C. § 103 based on the teachings of Friedes and IAH.
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-
74, 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
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