Appeal Number: 2006-1385
Application Number: 10/452,753
Claims 1-19 and 23-26 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Shridhara in view of Fielder.
Rather than reiterate the conflicting viewpoints advanced by the Examiner and
the Appellants regarding the above-noted rejections, we make reference to the
Examiner's Answer (mailed November 10, 2005) for the reasoning in support of
the rejection, and to Appellants’ brief (filed August 26, 2005) and reply brief (filed
January 10, 2006) for the arguments thereagainst.
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 given careful consideration to
the Appellants’ specification and claims, to the applied prior art references, and to
the respective positions articulated by the Appellants and the Examiner. As a
consequence of our review, we make the determinations that follow.
We begin with the rejection of claims 1-19 and 23-26 under 35 U.S.C. § 103(a)
as being unpatentable over Shridhara in view of Beesley. 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 459, 467 (1966), and to
provide a reason why one having ordinary skill in the pertinent art would have
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