Appeal 2007-1289
Application 10/425,899
have considered the positions set forth by the Examiner in the first Answer
mailed on August 24, 2006, and the supplemental Answer mailed on January
24, 2007. It is noted that both Answers appear to be the same. Of principal
interest here, the Examiner has not repeated the rejection of the claims on
appeal utilizing a reference to Hsu but has set forth a new ground of
rejection based upon Sabet-Shanghi in view of Mooney. Specifically, the
Examiner indicates at the bottom of page 9 of these Answers that arguments
made in the principal Briefs as to Hsu are moot in view of the new grounds
of rejection. Since the initial rejection utilizing the reference to Hsu has not
been repeated in the Answer but has been generally indicated here as being
withdrawn, we consider only the rejection utilizing Mooney. We have
considered and the Examiner has made reference to the comments in both
the initial Brief and amended, corrected Brief pertaining only to Sabet-
Shanghi. In turn, the Reply Brief filed on October 26, 2006 is the only Brief
that argues the rejection utilizing Mooney.
Rather than repeat the positions of the Appellant and the Examiner,
reference is made to the respective Briefs and Answers for positions of the
Appellant and the Examiner.
OPINION
Generally, for the reasons set forth by the Examiner in the Answer, we
sustain the new rejection of all claims on appeal under 35 U.S.C. § 103 on
the basis of the combined teachings and showings of Sabet-Shanghi in view
of Mooney.
At the outset, 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
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