Appeal No. 2002-1517
Application No. 08/927,660
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, 178 (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).
When determining obviousness, "the examiner can satisfy the burden of showing
obviousness of the combination ‘only by showing some objective teaching in the prior
art or that knowledge generally available to one of ordinary skill in the art would lead
that individual to combine the relevant teachings of the references.’" In re Lee,
277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). "Broad conclusory
statements regarding the teaching of multiple references, standing alone, are not
'evidence.'" In re Dembiczak, 175 F.3d 994, 999-1000, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999). "Mere denials and conclusory statements, however, are not sufficient to
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