Appeal No. 96-3338
Application No. 08/442,253
portions of the data. We do not find any disclosure in Furuya which teaches the above
claimed limitations. Nor do we agree with the Examiner that it would have been obvious to
one of ordinary skill in the art at the time of the invention to incorporate such a second code
into the message of Furuya as the Examiner has asserted.
Rejections based on § 103 must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention from the prior art. 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, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly
cautioned against employing hindsight by using the appellants' disclosure as a blueprint to
reconstruct the claimed invention from the isolated teachings of the prior art. See, e.g.,
Grain Processing Corp. v. American Maize-Products Co., 840 F.2d 902, 907, 5
USPQ2d 1788, 1792 (Fed. Cir. 1988). Since all the limitations of independent claim 1 are
neither taught nor suggested by the applied prior art, we cannot sustain the examiner's
rejection of appealed claim 1 under 35 U.S.C. § 103.
Since all the limitations of independent claim 1 are neither taught nor suggested by
the applied prior art, we cannot sustain the examiner's rejection of appealed claims 2-6
which depends therefrom, under 35 U.S.C. § 103.
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