Appeal No. 1998-1339
Application 08/024,305
hindsight or in view of the teachings or suggestions of the
inventor. Para-Ordnance Mfg. Inc. v. SGS Importers Int’l
Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir.
1995), cert. denied, 117 S.Ct. 80 (1996).
As is stated by the Court of Customs and Patent Appeals
in In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA
1967):
A rejection based on section 103 clearly must
rest on a factual basis, and these facts must be
interpreted without hindsight reconstruction of the
invention from the prior art. In making this
evaluation, all facts must be considered. The
Patent Office [examiner] has the initial duty of
supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded
assumptions or hindsight reconstruction to supply
deficiencies in its factual basis. (Emphasis in
original).
In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 572 (CCPA 1970);
In re Lunsford, 357 F.2d 385, 392, 148 USPQ 721, 726 (CCPA
1966)
The problem with the examiner’s rejection in this case is
that insufficient explanation is provided as to why one with
ordinary skill in the art would have been motivated to employ
(1) a coding means for simultaneously scanning a signal
according to a plurality of different scanning patterns to
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