Appeal No. 95-0575
Application No. 07/921,645
more than a change of form or design without a change of
function” (final rejection, page 2).
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967). In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may
not, because of doubts that the invention is patentable, resort
to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id.
In the present case, the examiner has failed to advance any
factual basis to support the conclusion that it would have been
obvious to one of ordinary skill in the art to modify the Exhibit
A adjustable basketball backboard system in the manner proposed.
The mere fact that the prior art could be so modified would not
have made the modification obvious unless the prior art suggested
the desirability of the modification (see In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). Exhibit A
contains no such suggestion.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claim 1, or of claims 2, 3, 5 and 10 which
depend therefrom, as being unpatentable over Exhibit A.
Bearson, Barisa, Bottorff, Haston, Wilson, Sinner and/or
Grable, applied by the examiner to meet other features of the
6
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