Appeal No. 2006-2458
Application No. 10/147,673
Therefore, we agree with the examiner that the user selections in the
example pointed to by appellant contradict claim 15 and evidence lack of an
adequate written description [see instant specification, page 22, line 33
through page 23, line 6]. Accordingly, we will sustain the examiner’s
rejection of claims 15-25 for failing to satisfy the written description
requirement of 35 U.S.C. § 112, first paragraph for essentially the same
reasons argued by the examiner in the answer.
II. We consider next the examiner’s rejection of claims 1-3, 7-17, 19 and
23-25 as being unpatentable over the teachings of Horiguchi in view of
Robinson [answer, pages 4-7]. We address these claims infra as separately
argued by appellant in the briefs.
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). The examiner must articulate reasons for the
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