Appeal No. 1997-2027
Application 08/417,419
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.
In the present case, the examiner has inappropriately
generalized the teachings of Fleischer far beyond what one of
ordinary skill in the art would have reasonably gleaned
therefrom in an vain attempt to find some common ground
between the claimed method and the applied prior art. This
hindsight analysis of what Fleischer would have suggested to
the ordinarily skilled artisan is improper. The mere fact
that the prior art could be so modified would not have made
the modification obvious unless the prior art suggested the
desirability of the modification (see In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). Here, the
examiner’s conclusions of obviousness are based on a hindsight
reconstruction of the claimed invention from isolated
disparate teachings in the prior art. It follows that the
examiner’s rejection of claims 16-32 as being unpatentable
over the combined teachings of AAPA and Fleischer cannot be
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