Appeal No. 96-2081
Application 08/125,892
procedure. Thus, we must conclude that the examiner used
impermissible hindsight. 4
For the above reasons, the examiner's rejection of
appellant’s claims 24 through 30 under 35 U.S.C. § 103 as
being unpatentable over Lee will not be sustained.
REMAND TO THE EXAMINER
The specification indicates that prior to appellant's
invention, methods of packing an internal operative site
during
open surgery were well known. The appellant also admits that
prior to his invention methods for exposing and manipulating
tissue during endoscopically performed operative procedures
4 The conclusion that the claimed subject matter is obvious must be
supported by evidence, as shown by some objective teaching in the prior art or
by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). The examiner may not, because of
doubt that the invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies in the factual
basis for the rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
177 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
6
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