Appeal No. 96-3512
Application 08/235,623
noted above with respect to the § 102 rejection based on this
reference, namely, that there is no teaching in Lau of a “member”
that is self-supported either on or against the wall of the
reaction chamber required by the claims on appeal.
The answer also states that:
To the extent that Lau does not teach a non-supported
member, it would have been obvious to one of ordinary
skill in the art at the time the invention was made to
exclude the supports, with attendant loss of function,
as a design expedient or to prevent deposition on these
surfaces and waste of reactants. [Page 5.]
We observe, however, obviousness under § 103 is a legal
conclusion based on factual evidence (In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)) and the examiner may
not resort to speculation, or hindsight reconstruction to supply
deficiencies in the factual basis (In re GPAC Inc, 57 F.3d 1573,
1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995) and In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968)). Accordingly, the subjective opinion of the
examiner that the supports of Lau may be eliminated, without
evidence in support thereof, is not a basis upon which the legal
conclusion of obviousness may be reached. This is particularly
the case since the specification states that the “advantages of
this self supporting scheme are its simplicity, reduced cost, and
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