Appeal No. 1997-0552
Application No. 08/267,490
find that the examiner has not addressed this feature of the claimed invention. While the
examiner has maintained that Lappington teaches the use of a “standard manufacturing
process” to manufacture the electronic control units, the examiner summarily concludes
that “[p]ractitioners in the art would have found it obvious [that] a structure is required to
automatically program such particular application [in]to the EPROM unit. Marking device,
testing and mounting [of the] programmable unit to the controller are obvious in mass
production, especially, in electronic manufacturing art.” (See answer at pages 7 and 8.)
The examiner has provided no evidence or convincing line of reasoning to support the
ultimate conclusion of obviousness. While we do not disagree with the examiner that many
of the individual aspects of the claimed invention may have been well known in the
manufacturing art, the examiner has not provided evidence thereof nor has the examiner
provided a convincing line of reasoning for combining these separate functions into an
automatic system. Clearly, Lappington and Kidston do not teach or fairly suggest the
invention as claimed in claims 1 and 15.
We do not consider the rejection over Lappington and Kidston to be well taken. In
the first place, the examiner cites no evidence or reasoning to support his conclusion that it
would have been obvious to have an automatic system. A rejection based on
§ 103 must rest on a factual basis, which the PTO has the duty of supplying; the PTO "may
not, because it may doubt that the invention is patentable, resort to speculation, unfounded
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