Appeal No. 2000-0873
Application No. 08/975,983
Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ
303, 315 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Finally, the examiner contends that specifying the
amounts of paint to be used “would be the mere statement of
that which could be obviously, if not inherently, known to an
ordinarily skilled artisan, certainly not a patently [sic]
distinct and
unique feature over the prior art” (answer, page 10).
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
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