Ex parte KOBAYASHI et al. - Page 14




          Appeal No. 96-0005                                                          
          Application 07/722,599                                                      


               [i]t would have been an obvious expedient to one having                
               ordinary skill in the art at the time the invention was                
               made to provide floor 66 (see Fig. 12) of Metcalf with                 
               a cushion, in order to permit the flaps 66 to close but                
               still protect the top of the craft 102 from damage when                
               66 is folded over the top of 102; or to provide a                      
               cushioned area to sit when 66 is folded out as shown in                
               Fig. 12. [Answer, page 8.]                                             
          We must point out, however, that obviousness under  103 is a               
          legal conclusion based on factual evidence (In re Fine, 837 F.2d            
          1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988)) and the                   
          examiner may not resort to speculation or unfounded assumptions             
          to supply deficiencies in establishing a factual basis (see In re           
          Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967)),                
          cert. denied, 389 U.S. 1057 (1968).  Stated differently, the                
          subjective opinion of the examiner as to what is or is not                  
          obvious, without evidence in support thereof, does not provide a            
          factual basis upon which the legal conclusion of obviousness can            
          be reached.  Instead, it is well settled that in order to                   
          establish a prima facie case of obviousness the prior art                   
          teachings must be sufficient to suggest to one of ordinary skill            
          in the art making the modification needed to arrive at the                  
          claimed invention.  See, e.g., In re Lalu, 747 F.2d 703, 705, 223           
          USPQ 1257, 1258 (Fed. Cir. 1984).  Here, the examiner has made              
          the bald assertion that it would have been obvious to provide a             
          cushion on the hinged cover of Metcalf in such a manner to permit           
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