Appeal No. 98-0984
Application 08/428,561
components may not be compatible with the
refrigerants so that it would not be a
design choice to use only non-electrolytic
capacitive components as recited by claim
9.
It is well settled that a rejection based on § 103
must rest on a factual basis, which the Patent and Trademark
Office has the initial duty of supplying. In re GPAC, Inc.,
57 F.3d 1573, 1582, 35 USPQ2d 1116, 1123 (Fed. Cir. 1995).
Here, appellant's admission that electrolytic and non-
electrolytic capacitors are known is not a sufficient basis
for modifying the Voss system as proposed by the examiner,
supra, because there is no evidence in the cited prior art
that the compatibility (or lack thereof) of non-electrolytic
and electrolytic capacitors with refrigerant was known.
Absent such evidence, there is no basis for concluding that
use of a non-electrolytic capacitor in the Voss housing would
have been suggested to one of ordinary skill in the art. Cf.
In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999).
The rejection of claim 9 therefore will not be
sustained.
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