Appeal No. 1997-1022 Page 6
Application No. 08/368,359
§ 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, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
appellant's 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).
The examiner determined (answer, pp. 3-4) with respect to
claim 1 (the only independent claim on appeal) that (1) Oram
discloses a pants insert as claimed except for the insert
"being formed of fleece of the sheep skin and adjacent the
wearer's skin," (2) the material from which the insert is
constructed "has been considered a matter of routine
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