Appeal No. 2005-1361
Application No. 09/798,287 9
Dow does not teach status registers as set forth in appellants’
specification [reply brief, pages 9-10].
We will sustain the examiner’s rejection of claims 9, 10, 25
and 26 for the reasons argued by the examiner in the answer and
for the reasons discussed above with respect to claim 1.
We now consider the rejection of claims 5, 12, 14, 15, 21,
28, 30 and 31 under 35 U.S.C. § 103(a) as being unpatentable over
the teachings of Dow taken alone. 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.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
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