Appeal No. 97-2886
Application 08/441,493
examiner's bare assertion in this regard to be without any
factual underpinnings in the applied prior art and not otherwise
explained with any reasonable degree of specificity. It is by
now well settled that a rejection based on § 103 must rest on a
factual basis, with the facts being interpreted without hindsight
reconstruction of the invention from the prior art. In making
this evaluation, the examiner has the initial duty of supplying
the factual basis for the rejection he advances. He may not,
because he doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in the factual basis. See In re Warner, 379
F.2d 1011, 154 USPQ 173 (CCPA 1967). Absent the required factual
basis on the examiner's part, we refuse to sustain the rejection
of appellant's claim 9 under 35 U.S.C. § 103. It follows that
the examiner's rejection of claims 10 and 11, which depend from
claim 9, will also not be sustained.
Independent claim 12 on appeal defines an apparatus for
playing an anagram-type game, wherein the apparatus includes,
inter alia, "character moving means" for moving each of said
characters from its respective initial position to its respective
10
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