Appeal No. 2006-3002
Application No. 10/399,820
rejections, and to the brief (filed August 1, 2005) and reply brief (filed November 21,
2005) for the appellant's arguments thereagainst.
Only those arguments actually made by appellant has been considered in this
decision. Arguments which appellant 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 rejections advanced by the examiner, and the evidence of
obviousness relied upon by the examiner as support for the rejections. 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.
Upon consideration of the record before us, we make the determinations which
follow. We begin with the rejection of claim 5 under 35 U.S.C. § 103(a) as being
unpatentable over Shueh.
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 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,
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