Appeal No. 2004-2245
Application No. 10/145,544
Claims 52-60, and 76-81 stand rejected under 35 U.S.C.
§ 103. As evidence of obviousness, the examiner offers Hull,
Judd, Shaughnessy, and Pereira with regard to claims 52, 53, 55,
56, 58, and 59, adding Pohlmann with regard to claims 54, 57, and
60. With regard to claims 76, 78, and 80, the examiner offers
Hull, Judd, Shaughnessy, and Pereira, Carper, and Dugan, adding
Farrell with regard to claims 77, 79, and 81.
Reference is made to the briefs2 and answer for the
respective positions of appellants and the examiner.
OPINION
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
2We refer to the revised brief, of December 30, 2003, Paper
No. 16, as the “principal brief” and the reply brief of May 20,
2004, Paper No. 18, as the “reply brief.”
-3-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007