Appeal No. 2006-2723
Application No. 09/891,264
We have, likewise, reviewed and taken into consideration, in reaching our
decision, Appellant’s arguments set forth in the briefs along with the Examiner’s
rationale in support of the rejections and arguments in rebuttal set forth in the
Examiner’s answer.
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, 17-18, 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, knowledge generally
available to one having ordinary skill in the art or the nature of the problem to be
solved. In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999); 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.
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