Appeal No. 96-1602
Application 08/168,669
bearing race whereas Miyazawa’s groove is located on the outer circumference of the
outer bearing race), the examiner further posits that
. . . one having ordinary skill in the art is deemed to be of sufficient
intelligence to realize that the environment in which the bearing inserts are
utilized will dictate the location of this groove. Thus, because the inner and
outer circumferences of the inner race and the inner circumference of the
outer race of Skorka are the only surfaces accessible to a bearing puller
once axle 10 has been removed[,] one having ordinary skill in the art would
have found it obvious to provide the groove on any of these circumferences.
[Answer, page 4.]
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. 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), cert. denied, 389 U.S. 1057 (1968).
In the present instance, even if we were to accept the examiner’s foundation
position that it would have been obvious to provide a groove on the bearing inserts of
Skorka for the purpose taught by Miyazawa at column 3, lines 33-41, we cannot accept the
examiner’s further position that it would also have been obvious to one of ordinary skill in
the art to provide a bearing puller groove at the specific location called for by the appealed
claims (i.e., along the inner circumference of the inner bearing race). The only applied
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