Appeal No. 2006-2839
Application No. 10/699,229
the rejection, and to the brief (filed July 11, 2005) and reply brief (filed April 14,
2006) for the appellants' arguments there against.
Only those arguments actually made by appellants have been considered in
this decision. Arguments which appellants could have made but chose not to make
in the brief have not been considered. See 37 C.F.R. § 41.37(c)(1)(vii)(eff. Sept.
13, 2004).
OPINION
In reaching our decision in this appeal, we have carefully considered the
subject matter on appeal, the rejection advanced by the examiner, and the evidence
of obviousness relied upon by the examiner as support for the rejection. We have,
likewise, reviewed and taken into 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. Upon consideration of the record before us, we make the determinations
which follow2.
We note at the outset that appellants' arguments are directed to claim 1.
Accordingly, we select claim 1, the sole independent claim before us for decision
on appeal, as representative of the group. Turning to claim 1, we note as
background that 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
2 From our review of the record, we find no indication that the IDS filed on March 9, 2006 has been considered by
the examiner. The examiner should consider this matter upon return of the application to the Technology Center.
3
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