Ex Parte Searle et al - Page 4



          Appeal No. 2006-1428                                        Παγε 4                          
          Application No. 10/669,157                                                                  

          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.                            
          Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ                              
          657, 664 (Fed. Cir. 1985); 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 1443, 1444                              
          (Fed. Cir. 1992).  If that burden is met, the burden then shifts                            
          to the applicant to overcome the prima facie case with argument                             
          and/or evidence.  Obviousness is then determined on the basis of                            
          the evidence as a whole.  See id.; In re Hedges, 783 F.2d 1038,                             













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