Appeal No. 2005-2526
Application No. 09/754,553
OPINION
At the outset, we note that, in accordance with appellants’
grouping of claims at page 4 of the principal brief, claims 2, 5-8,
11-14, and 17-20 are grouped with claim 1, and claims 3, 4, 9, 10,
15, and 16 are grouped with claim 3. Accordingly, we will consider
claims 1 and 3.
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 teachings, suggestions or implications 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,
3
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