Appeal No. 96-1227
Application 08/134,853
business forms in the methodology of the above combined
references in the long grain direction” (answer, page 4).
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). 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.
The above limitations in claim 26 relating to the “long
grain direction” are disclosed in the appellants’
specification (see page 3) as solving the problem of form
wrinkling caused by the application of sealing forces in the
direction perpendicular to the long grain direction of the
form. This problem and the appellants solution thereto are
further discussed in the 37 CFR § 1.132 declaration of David
G. Wagner filed on December 20, 1994 (Paper No. 24). Neill,
Klar and Gerlach do not make any mention of the long grain
direction of the respective packaging materials disclosed
therein, and certainly do not appreciate that grain direction
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