Appeal No. 96-3520
Application 08/260,563
A rejection based on § 103 must rest on a factual
basis, with the facts being interpreted without hindsight
reconstruction of the invention from the prior art. In making
this evaluation, the examiner has the initial duty of supplying
the factual basis for the rejection he advances. The examiner
may not, because he doubts that the invention is patentable,
resort to speculation, unfounded assumptions or hindsight
reconstruc-tion to supply deficiencies in the factual basis. See
In re Warner, 379 F.2d 1011, 1016, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). The proper test for
obviousness is what the combined teachings of the references
would have suggested to those having ordinary skill in the art.
See Cable Electric Products, Inc. v. Genmark, Inc., 770 F.2d
1015, 1025, 226 USPQ 881, 886-887 (Fed. Cir. 1985); In re Kaslow,
707 F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983); In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). The
law followed by our court of review, and thus by this Board, is
that "[a] prima facie case of obviousness is established when the
teachings from the prior art itself would appear to have
suggested the claimed subject matter to a person of ordinary
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