Appeal No. 2002-0811 Page 4
Application No. 09/182,466
The second fatal line of reasoning advanced by the examiner on page 5 of the
Answer asserts that the artisan “would have expected Applicant’s invention to perform
equally well….” This line of reasoning advanced by the examiner appears to be a
subtle form of prohibited hindsight, using appellants’ disclosed and/or claimed invention
against them.
The examiner’s rationale appears to be based upon the examiner’s view of what
the artisan would surmise or conclude without any further evidentiary basis to support
the assertions and conclusions reached. The examiner’s rationale cannot be a
substitute for evidence to prove unpatentability.
In order for us to sustain the examiner’s rejection under 35 U.S.C. § 103, we
would need to resort to speculation or unfounded assumptions to supply deficiencies in
the factual basis of the rejections. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968), reh’g denied, 390 U.S. 1000
(1968). This we decline to do.
Our reviewing court has made it clear in In re Lee, 277 F.3d 1338, 61 USPQ2d
1430 (Fed. Cir. 2002), and In re Zurko, 111 F.3d 887, 42 USPQ2d 1476 (Fed. Cir.
1997), that rejections must be supported by substantial evidence in the administrative
record and that where the record is lacking in evidence, this Board cannot and should
not resort to unsupported speculation. As indicated in Lee, 277 F.3d at 1343-44, 61
USPQ2d at 1433-34, the examiner's finding of whether there is a teaching, motivation or
suggestion to combine the teachings of the applied references must not be resolved
based on "subjective belief and unknown authority," but must be "based on objective
evidence of record."
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