Appeal No. 2005-0289 Page 13
Application No. 09/491,841
that the protrusion extends beyond the sealing lips. In
Ellinwood, the cushioning element 13 could only act as a seal
when compressed around the conduit line. However, as seen in
figure 7, relied upon by the examiner, resilient tongue-like
strips 14 do not extend beyond the cushion 13 when the conduit
supporting clip is in place. Thus, for this additional reason,
Ellinwood cannot be said to anticipate claims 1 and 13.
From all of the above, we find that the examiner has failed
to establish a prima facie case of anticipation of independent
claims 1 and 13. Accordingly, the rejection of claims 1, 3, 7,
8, 11, 13, 14, 16-18, 20, 22, 24, 25, 29 and 39 under 35 U.S.C.
§ 102(b) as being anticipated by Ellinwood is reversed.
We turn next to the rejection of claims 23 and 26 under 35
U.S.C. § 103(a) as being unpatentable over Ellinwood. 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
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