Appeal No. 97-4078
Application No. 08/232,947
are silent as to the use of the asserted structures to function as "a lever for pivoting one of
the jaws relative to the sun visor . . . allows said articles to pass readily into or out or
position between said nubs." The flanges 18 and 20 disclosed by Carter-Mann are merely
disclosed to support/attach trash can liners for different size liners and different size cans.
The Examiner has not provided any suggestion why it would have been obvious to one of
ordinary skill in the art at the time of the invention to use any of the flanges in the Gaudino
patent or Carter-Mann patent as "a lever . . . allows said articles to pass readily into or out
of position between said nubs" as recited in the language of claim 1.
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). Since all the limitations of independent claim 1 are
neither taught nor suggested by the applied prior art, we cannot sustain the Examiner's
rejection of appealed claim 1 under 35 U.S.C. § 103.
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