Appeal No. 2000-0324 Page 6
Application No. 08/763,874
reference thermocouple in the location set forth by the claims
under appeal (e.g., "in a blood pool" as recited in claim 44).
In that regard, it is our opinion that Khalil's teaching of a
carotid thermodilution catheter having thermocouple 21 and
reference thermocouple 25 mounted on the catheter to provide a
convenient measure of local temperature rise at heating coil
19 would not have motivated a person having ordinary skill in
the art to modify Desai's catheter to include a reference
thermocouple located as set forth in the claims under appeal.
Rejections based on 35 U.S.C. § 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. In this case, it appears to us that
the examiner relied on hindsight in reaching his obviousness
determination. However, our reviewing court has said, "To
imbue one of ordinary skill in the art with knowledge of the
invention in suit, when no prior art reference or references
of record convey or suggest that knowledge, is to fall victim
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