Appeal No. 95-1276
Application 07/839,969
adjacent receivers in the data handling sub so as not to be
subject to interference by the weathering layer and other strata
between the data handling sub and the earth’s surface (Answer at
page 11). However, the examiner does not have a factual basis
for this statement.
A rejection based on 35 U.S.C. § 103 must rest on a
factual basis, with the facts being interpreted without hindsight
reconstrution 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. He may not,
because he doubts that the invention is patentable, resort to
speculation, unfounded assumptions 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).
As such it is the examiner’s duty to establish a
factual basis for concluding that Lygas teaches or suggests the
placement of the receiver in the data handling sub. The examiner
has not met this burden. We have reviewed the disclosures of
Lord, Cox, Ely, Hoyle, Schuster and Moser but these references do
not cure the deficiencies of Lygas in this regard. For example,
while Cox, Ely, Hoyle, Schuster and Moser disclose downhole
logging tools which include transmitters and receivers, these
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