Appeal No. 2005-2111 5
Application No. 09/827,454
regard to claims 34 and 35, adding Pepper to this combination with regard to claims 36-
39. Finally, the examiner offers Pepper and Vasil’ev with regard to claims 42-44.
Reference is made to the briefs and answer for the respective positions of appellant
and the examiner.
OPINION
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, 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. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These
showings by the examiner are an essential part of complying with the burden of presenting
a prima facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
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