Appeal No. 98-1022
Application 08/380,796
shape, or thickness of a fluid tank to achieve a
desired effect, such as saving space or increasing
strength. Such would require only routine skill in
the art and each such change would not provide basis
for an additional patent. [Answer, page 5.]
We will not sustain this rejection.
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), cert. denied, 389 U.S. 1057 (1968).
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, the examiner has failed to advance
any factual basis to support the conclusion that it would have
been obvious to one of ordinary skill in the art to provide
the tank 15 of Sigler with flat walls, with said flat walls
“having no continuous flat surface of greater than about 80
-4-
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007