Appeal No. 2006-1692 Παγε 20
Application No. 10/068,243
rollers. We are not persuaded that the super-tough nylon of
Thompson will function differently from the nylon disclosed in
appellant’s specification. Although we have considered the
Declaration, it is inapplicable to a rejection under 35 U.S.C.
§ 102.
From all of the above, we are unconvinced of any error on
the part of the examiner in rejecting claims 7, 10 and 13 under
35 U.S.C. § 102(b) as being anticipated by Thompson. The
rejection of claims 7, 10 and 13 under 35 U.S.C. § 102(b) is
sustained.
We turn next to the rejection of claims 1-6, 8 and 9 under
35 U.S.C. § 103(a) as being unpatentable over Thompson in view of
Rowles. 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
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