Appeal No. 1998-2936
Application No. 08/665,590
some objective teaching in the prior art or by knowledge generally available to one of
ordinary skill in the art that would have led that individual to combine the relevant teachings
of the references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on
§ 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. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968). Our reviewing court has repeatedly cautioned against employing
hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See, e.g., Grain Processing Corp.
v. American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir.
1988).
Further, as pointed out by our reviewing court, we must first determine the scope of
the claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362,1369,
47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
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