Appeal No. 98-2771
Application 08/428,863
examiner’s position is based on unfounded assumptions stemming
from the use of impermissible hindsight. 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 she advances.
She may not, because she 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, 1017, 154
USPQ 173, 178 (CCPA 1967). Absent the required factual basis
on the examiner's part, we refuse to sustain the rejection of
appellant's claim 14 under 35 U.S.C. § 103. It follows that
the examiner's rejection of claim 20, which depend from claim
14, will also not be sustained.
Having reviewed both Oaks and Wilson, as respectively
applied by the examiner under 35 U.S.C. § 103 against
dependent claims 15 and 16, we note that these references
provide no teaching or suggestion regarding the deficiencies
15
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