Ex Parte Bonaccio et al - Page 3



          Appeal No. 2005-0261                                                        
          Application No. 09/682,473                                                  

          consideration, in reaching our decision, the appellants’                    
          arguments set forth in the briefs along with the examiner’s                 
          rationale in support of the rejection and arguments in rebuttal             
          set forth in the examiner’s answer.                                         
          It is our view, after consideration of the record before us,                
          that the evidence relied upon and the level of skill in the                 
          particular art would not have suggested to one of ordinary skill            
          in the art the obviousness of the invention as set forth in                 
          claims 8 and 13.  Accordingly, we reverse.                                  
          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,             
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