Appeal No. 96-0005
Application 07/722,599
[i]t would have been an obvious expedient to one having
ordinary skill in the art at the time the invention was
made to provide floor 66 (see Fig. 12) of Metcalf with
a cushion, in order to permit the flaps 66 to close but
still protect the top of the craft 102 from damage when
66 is folded over the top of 102; or to provide a
cushioned area to sit when 66 is folded out as shown in
Fig. 12. [Answer, page 8.]
We must point out, however, that obviousness under § 103 is a
legal conclusion based on factual evidence (In re Fine, 837 F.2d
1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)) and the
examiner may not resort to speculation or unfounded assumptions
to supply deficiencies in establishing a factual basis (see In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967)),
cert. denied, 389 U.S. 1057 (1968). Stated differently, the
subjective opinion of the examiner as to what is or is not
obvious, without evidence in support thereof, does not provide a
factual basis upon which the legal conclusion of obviousness can
be reached. Instead, it is well settled that in order to
establish a prima facie case of obviousness the prior art
teachings must be sufficient to suggest to one of ordinary skill
in the art making the modification needed to arrive at the
claimed invention. See, e.g., In re Lalu, 747 F.2d 703, 705, 223
USPQ 1257, 1258 (Fed. Cir. 1984). Here, the examiner has made
the bald assertion that it would have been obvious to provide a
cushion on the hinged cover of Metcalf in such a manner to permit
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