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
8
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