Appeal No. 96-4162
Application 08/313,901
11, are summarized as follows. Each of the primary references Luther ‘891, Luther ‘898,
Schwartzburg and Zushi uses a mold apparatus comprising several mold members which
will leave parting lines on the outside of the molded article when separated. Neither of the
secondary references Wilkinson or Baugh provides “disclosure as to any molding
techniques employed or any of the problems or their solution contemplated by Applicants”
(main brief, page 9). The appellant questions the examiner’s contention that the primary
references each clearly show that the parting lines formed by the mold members will fall
outside the frusto-conical region (main brief, page 9). The appellant’s reference to In re
Fritch, 972 F.2d 1260, 23 USPQ2d 1780 (Fed. Cir. 1992) on page 11 of the main brief is
interpreted as an argument that the examiner impermissibly relied upon hindsight
reconstruction of the appellant’s invention to combine the references so as to arrive at the
determination of obviousness. We agree.
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such
a rejection, the examiner has the initial duty of supplying the requisite factual basis and
may not, because of doubts that the invention is patentable, 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, 177-78 (CCPA 1967).
In the mold apparatus of Luther ‘891, the molding surfaces (170) of mold side walls
(151 through 154) combine with the surface (133) and recess (33) to form the exterior side
10
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