Appeal No. 2001-0466
Application No. 29/112,628
the area enclosed by the outer frame as proposed by the
examiner, such modification would not result in the claimed
design. The resulting picture frame would not give the
impression of square inner and outer frames (appellant's
Figures 1-3) or a square outer frame and circular inner frame
(appellant's Figures 4-6).
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. 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.
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
We are cognizant of the examiner's assertions on page 4
of the answer that "[t]his simple change in proportions (the
choice of square versus rectangle) is notoriously old in the
picture frame art, [and] would have been obvious to one
skilled in the art." However, these assertions are conclusory
in nature and are not supported by any evidence supplied by
the examiner in making the rejection.
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