Appeal No. 96-3652
Application No. 08/348,820
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. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (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).
From our perspective, the examiner’s rejection appears to
be premised on impermissible hindsight reasoning.
Accordingly, on the record of this appeal, it is our view that
the examiner has not carried the burden of establishing a
prima facie case of obviousness with respect to the subject
matter defined by the appealed claims.
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