Appeal No. 98-2036
Application 08/589,250
edge margin. As indicated above, Drake's pattern of
repositional adhesive extends over the line of weakness 5 and
onto the securing edge margin of each top sheet. Nonetheless,
the examiner has concluded that "[i]t would have been obvious
to one skilled in the art at the time the invention was made
to remove the adhesive from the opposite side of the margins
(5) of Drake since it is clear that the omission of the
adhesive would not hinder the remaining elements from
performing the same function" (first Office action, page 2).
The examiner, however, has failed to advance any evidence
in support of this conclusion. 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. In the present case,
Drake extends the pattern of repositional adhesive over the
line of weakness 5 and onto the securing edge margin of each
top sheet for specific reasons, record sheets and to restrain
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