Appeal No. 97-0260
Application 08/287,477
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). 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 Appellant's
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). On the
other hand, we are also guided by the precedents of our
reviewing court that the limitations from the disclosure are
not to be imported into the claims. In re Lundberg, 244 F.2d
543, 113 USPQ 530 (CCPA 1957); In re Queener, 796 F.2d 461,
230 USPQ 438 (Fed. Cir. 1986).
With this as background, we analyze the prior art applied
-6-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007