Appeal 2007-0642
Application 10/267,877
it teaches away from the claimed invention, and whether it motivates a
combination of teachings from different references are questions of fact.” In
re Fulton, 391 F.3d 1195, 1199-1200, 73 USPQ2d 1141, 1144 (Fed. Cir.
2004) (internal citations omitted). 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
must make the factual determinations set forth in Graham v. John Deere
Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). Furthermore, “‘there must
be some articulated reasoning with some rational underpinning to support
the legal conclusion of obviousness’ . . . . [H]owever, the analysis need not
seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ.” KSR Int’l v.
Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007) (quoting In re Kahn,
441 F.3d 977, 988 (Fed. Cir. 2006)).
With respect to dependent claims 7, 8, and 10-12, Appellants rely
upon the same arguments as advanced with respect to independent claim 1
(Br. 16-17). Since we did not find those arguments persuasive with respect
to independent claim 1, we similarly do not find reliance thereon persuasive
with respect to dependent claims 7, 8, and 10-12.
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