Appeal No. 97-2243
Application 08/222,584
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967). In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id.
In the present case, Trower and Jaschek do not justify the
examiner’s conclusion that it would have been obvious to one of
ordinary skill in the art to laminate Trower’s intermediate layer
14 and outer wall 12 to one another. In short, the semi-rigid,
self-supporting pool wall defined by Trower’s intermediate layer
14 and outer wall 12 and the highly flexible coated fabrics
disclosed by Jaschek have little, if any, meaningful relevance to
one another. The only suggestion to combine these two references
in the manner proposed by the examiner stems from impermissible
hindsight knowledge derived from the appellant’s own disclosure.
Moreover, this deficiency in the basic Trower-Jaschek combination
is not cured by the German reference which discloses a pool wall
laminate consisting of a polyurethane foam core sandwiched
between polypropylene liners.
-5-
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007