Appeal No. 97-4179
Application 08/510,526
claimed invention (see, e.g., In re Lalu, 747 F.2d 703, 705, 223
USPQ 1257, 1258 (Fed. Cir. 1984)). Here, Schatz discloses a
single instrument which may be used in three different positions
that are illustrated in Figs. 2-4. There
is absolutely nothing in Schatz which would suggest combining
vertical and horizontal protractors as the examiner suggests,
much less making simultaneous measurements of torticollis
characteristics in the manner claimed. “A rejection based on
section 103 must rest on a factual basis, and these facts must
be interpreted without hindsight reconstruction of the invention
from the prior art. . . . [The examiner] may not [,as has been
done here,] . . . resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in . . . [the] .
. . factual basis.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967).
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