Appeal No. 98-2122 Page 4
Application No. 08/607,886
an extreme left or right side to the center -- the
adjacent panels still interconnect in the required
tongue-and-groove manner, and the resultant wall
still serves as a noise barrier. [Answer, page 5.]
We will not support the examiner's position. Obviousness
under § 103 is a legal conclusion based on factual evidence (In
re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988)) and it is well settled that, in order to establish a
prima facie case of obviousness, the prior art teachings must
be sufficient to suggest to one of ordinary skill in the art
making the modification needed to arrive at the claimed
invention (see, e.g., In re Lalu, 747 F.2d 703, 705, 223 USPQ
1257, 1258 (Fed. Cir. 1984)). The examiner, however, has
provided no factual evidence whatsoever in support of the
position that it would have been obvious to center the wall
with respect to the mounting post. As the court in In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968) stated: “A rejection based
on section 103 must rest on a factual basis, and these facts
must be interpreted without hindsight reconstruction of the
invention from the prior art. . . . [The examiner] may not . .
. resort to speculation, unfounded assumptions or hindsight
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