Appeal No. 98-1971
Application 08/575,125
in the manner set forth in the Garelick patent. Like
appellant, we consider that the absence of any connecting rod
structure between the wheels of Garelick’s apparatus is
essential in order for the dolly of Garelick to be properly
positioned around the snowmobile therein and to function in
the manner envisioned by the patentee. Simply stated, we see
nothing in the disclosure of Garelick and Moisan which would
have fairly led a worker of ordinary skill in the art to the
particular modifications of Garelick urged by the examiner.
As is well settled, a rejection based on §103 must rest
on a factual basis, with the facts being interpreted without
hindsight reconstruction of the invention from the prior art.
In making this evaluation, the examiner has the initial duty
of supplying the factual basis for the rejection he advances.
He may not, because he doubts that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual
basis. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert denied, 389 U.S. 1057 (1968).
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