Appeal No. 97-1192
Application 08/385,290
claimed invention is obvious in view of Lyng since
none of the slight differences therefrom patentably
distinguish it from Lyng [answer, pages 3 and 4].
Rejections based on 35 U.S.C. § 103 must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 177-78 (CCPA 1967). 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. Id.
As conceded by the examiner, Lyng does not expressly meet
the pore size limitations in claim 1. The appellants’
specification indicates that these pore sizes play an
important role in accomplishing the stated objectives of the
claimed template. The examiner’s attempt to explain away
Lyng’s deficiencies in this regard is replete with speculation
and unfounded assumptions having no reasonable foundation in
the Lyng disclosure. We are therefore constrained to conclude
that Lyng does not provide the factual basis necessary to
justify the obviousness rejection of claim 1. Kimura, applied
in a secondary capacity to support the rejection of dependent
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