Appeal No. 2005-1975 Page 8
Application No. 09/819,292
experimentation, if any, would have been required to switch the
device from laptop to PDA modes and to activate the software for
the selected mode. From all of the above, we find that the
subject matter of claim 30 is enabled and that the examiner has
failed to establish a prima facie case of lack of enablement of
claim 30. The rejection of claim 30 is therefore reversed.
We turn next to the rejection of claim 9, which is
representative of the group of claims including claims 9, 10, 12-
14, 16, 26 and 27. 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. 1988); Ashland Oil, Inc. v.
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