Ex parte MIMEUR et al. - Page 8




          Appeal No. 96-0987                                                          
          Application No. 08/226,467                                                  


          Molitor of the use of polyurethane material in combination with             
          the club heads formed as a hollow metal shell.  In fact, the two            
          types of club heads are disclosed as alternatives.  Note the                
          second paragraph of the "ABSTRACT," column 2, lines 22 through 36           
          and column 6, lines 47 through 52.  Accordingly, we find no                 
          factual basis from the evidence applied by the examiner in the              
          rejection of appealed claims 8 and 12 sufficient to conclude that           
          it would have been obvious to one having ordinary skill in the              
          art to form the viscoelastic material of Fenton from a material             
          suitable for molding in a RIM process.                                      
                    Rejections based on  103 must rest on a factual basis            
          with these facts being interpreted without hindsight reconstruc-            
          tion of the invention from the prior art.  The examiner has the             
          initial duty of supplying the factual basis for the rejection.              
          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.  See In re GPAC Inc., 57 F.3d 1573, 1582, 35 USPQ2d 1116,            
          1123 (Fed. Cir. 1995) and 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 also repeatedly cautioned                  
          against employing hindsight by using the applicant's disclosure             

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