Appeal No. 2006-0910
Application No. 09/725,821
consideration, in reaching our decision, Appellants’ arguments
set forth in the Briefs along with the Examiner’s rationale in
support of the rejection and arguments in rebuttal set forth in
the Examiner’s Answer.
It is our view, after consideration of the record before us,
that the evidence relied upon and the level of skill in the
particular art would not have suggested to one of ordinary skill
in the art the obviousness of the invention as set forth in
claims 1-8 and 14-18. Accordingly, we reverse.
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
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