Ex Parte Kikuchi et al - Page 3

               Appeal 2007-2490                                                                           
               Application 09/846,255                                                                     
                                                                                                         
                     Rather than repeat the arguments of Appellants or the Examiner, we                   
               refer to the Briefs and the Answer2 for their respective details.  In this                 
               decision, we have considered only those arguments actually made by                         
               Appellants.  Arguments which Appellants could have made but did not make                   
               in the Briefs have not been considered and are deemed to be waived.  See 37                
               C.F.R. § 41.37(c)(1)(vii).                                                                 

                                                OPINION                                                   
                     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).                                                                      
                     Discussing the question of obviousness of a patent that claims a                     
               combination of known elements, KSR Int’l v. Teleflex, Inc., 127 S. Ct. 1727,               
               82 USPQ2d 1395 (2007) explains:                                                            
                     When a work is available in one field of endeavor, design                            
                     incentives and other market forces can prompt variations of it,                      
                     either in the same field or a different one.  If a person of                         
                     ordinary skill can implement a predictable variation, §103                           
                     likely bars its patentability.  For the same reason, if a technique                  
                     has been used to improve one device, and a person of ordinary                        
                     skill in the art would recognize that it would improve similar                       
                     devices in the same way, using the technique is obvious unless                       
                     its actual application is beyond his or her skill.  Sakraida [v. AG                  
                                                                                                         
               2 We refer to the most recent Examiner’s Answer, mailed Sept. 1, 2006,                     
               throughout this opinion.                                                                   
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