Appeal No. 95-4673
Application 08/097,759
1976). A rejection based on § 103 must rest on a factual
basis, with the facts being interpreted without hindsight
reconstruction of the invention from the prior art. In making
this evaluation, the examiner has the initial duty of
supplying the factual basis for the rejection he/she advances.
The examiner may not, because he/she doubts that the invention
is patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual
basis. See In re Warner, 379 F.2d 1011, 1016-17, 154 USPQ
173, 177-78 (CCPA 1967).
In this case, essentially for the reasons stated by
appellant in the brief (pages 5-9), we find that the
examiner's rejection of claims 10 through 12 and 14 through 16
under 35 U.S.C. 103 is not sustainable. Like appellant, we are
of the opinion that the examiner has inappropriately relied
upon hindsight and improperly used appellant's own disclosure
and teachings as a guide through the prior art references and
the individual features thereof in attempting to combine only
a selected one of those features (i.e., the notches) in a
modification of the Hayes paint can holder so as to arrive at
the claimed subject matter.
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