Appeal No. 96-0852
Application 08/116,581
After carefully reviewing the applied prior art and the examiner’s rejection, we share appellants’
view that the numerous modifications of Lamazou proposed by the examiner on pages 4 and 5 of the
answer are based on impermissible hindsight derived from reliance upon appellants’ own teachings. In
contrast with the examiner’s determinations, we do not consider that the mere existence of the concepts
of a heater and a remotely located electronic control unit as in Tinklepaugh, and nested columns as in
Claudy, when considered with the APA pointed to by the examiner, are sufficient to have led one of
ordinary skill in the art to modifications of Lamazou which would have resulted in a chromatographic
system or analyzer as specifically defined by appellants in independent claims 1 and 9 on appeal.
In this regard, we note 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), cert. denied, 389 U.S. 1057 (1968). As our Court
of review indicated in In re Fritch, 972 F.2d 1260, 23 USPQ2d 1780 (Fed. Cir. 1992), it is
impermissible, as the examiner has done here, to use the claimed invention as an instruction manual or
"template" to piece together isolated disclosures and teachings of the prior art so that the claimed
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