Appeal No. 96-3174
Application 07/970,608
Maus . . . is practically identical to appellant’s disclosure”
(answer, page 12) and that “the timing of the application of
force would have been readily determined through routine
experimentation by one having ordinary skill in the art at the
time of appellant’s invention based upon the other variable
process parameters and conditions” (answer, page 11-12).
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
In making such a rejection, the examiner has the initial duty
of supplying the requisite factual basis and may not, because
of doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id. In the
present case, the examiner has failed to advance any factual
basis to support the conclusion that it would have been
obvious to one of ordinary skill in the art to modify Maus in
a manner which would result in the method of claim 10. Again,
the mere fact that the prior art could be so modified would
not have made the modification obvious unless the prior art
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