Appeal No. 1998-1029
Application 08/361,590
2, lines 34-42). [When] [t]he explicit disclosure of
elasticity [is] taken in view of the complexity of
the invention and the skill of the ordinary skilled
artisan, it is deemed that to make the mouth of the
Bunin figure deformable over 50% would have been
obvious, since the difference between the invention
and the prior art is merely a matter of degree of
elasticity and it is strongly believed that the
ordinary skilled artisan would have the skill to
modify the disclosed elasticity to any degree
including over 50%. [Answer, page 5.]
Legal conclusions of obviousness must be supported by
facts. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967). An examiner has the initial burden of supplying
the requisite factual basis and may not, because of doubts
that the claimed invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id.
We are aware that the material of Bunin’s puppet-like
figure has at least some elasticity. We also are aware that
Bunin’s Figure 2 embodiment includes a mouth that may be
manipulated by rods 11 to change the expression of the face.
However, Bunin is silent as to the size of the mouth, and
expressly states that the principal criterion for choosing the
material of the puppet-like figure is flexibility, not
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