Appeal No. 97-1147
Application 08/349,087
examiner now urges.
In light of the foregoing, we must agree with appellants'
position that the examiner has failed to make out a prima facie
case of obviousness under 35 U.S.C. § 103. 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 (or she) 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). Since in this case there is an inadequate factual
basis to support the examiner's rejection of appellants' claims
4 and 7 under 35 U.S.C. § 103, we are compelled to reverse that
rejection.
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