Ex Parte Huang - Page 6



                   Appeal No. 2006-2187                                                                                           
                   Application No. 10/642,413                                                                                     

                   1013, 1016, 173 USPQ 560, 562 (CCPA 1972).  Furthermore, the                                                   
                   conclusion that the claimed subject matter is prima facie obvious must be                                      
                   supported by evidence, as shown by 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, 178 (CCPA 1967).  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-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792                                              
                   (Fed. Cir. 1988).                                                                                              
                          When determining obviousness, “the [E]xaminer 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,                                        


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