Appeal No. 96-3408
Application No. 08/194,904
make the proposed modification. See In re Lintner, 9 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion
that the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in the
applied prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual to
modify the relevant teachings of the applied prior art to arrive
at the claimed invention. See In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on
§ 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt that
the invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies in
the factual basis for the rejection. See In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S.
1057 (1968). Our reviewing court has repeatedly cautioned
against employing hindsight by using the appellants' disclosure
as a blueprint to reconstruct the claimed invention from the
isolated teachings of the prior art. See, e.g., Grain Processing
Corp. v. American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d
1788, 1792 (Fed. Cir. 1988).
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