Appeal No. 96-1501
Application No. 08/172,517
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984).
Additionally, rejections based on § 103 must rest on a
factual basis with these facts being interpreted without
hindsight reconstruction 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 Warner, 379 F.2d 1011, 1017,
154 USPQ 173, 178 (CCPA 1967). Our reviewing court has
repeatedly cautioned against employing hindsight by using the
appellants' disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings in the prior art. See,
e.g., Grain Processing Corp. v. American Maize-Prods. Co.,
840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
With this as background, we first consider the examiner's
rejection of claims 1 through 3, 5 and 6 under 35 U.S.C. § 103 as
being unpatentable over Appellants' admitted prior art in view of
Walker. We agree with the examiner's position that Appellants'
admitted prior art discloses that it is well known to coat the
inside of metal containers to be used for food products (page 2
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007