Appeal No. 97-2550
Application 08/467,698
In proposing to combine Bonutti and Lee to support the
rejection of claim 12, the examiner concludes that
[i]ncluding stiffening wires in the Bonutti device
of figures 9-10 (in member 12 and/or 14) in order to
reinforce it and thus prevent it from collapsing or
bending excessively would have been obvious in view
of the Lee et al. teaching of using stiffening wires
20 to reinforce a surgical device. The Bonutti
inflation conduit would obviously be between
adjacent wires since the wires and the inflation
conduit would all be within the same wall of the
Bonutti device [answer, page 3].
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 indicated above, Bonutti teaches that appropriate
fluid passages are provided in the retractor body 12 and the
retractor sleeve 14 to provide fluid communication between the
fluid supply port 146 and the bladder 150. Even if Bonutti
and Lee were combined in the manner proposed by the examiner,
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