Appeal No. 98-2126 Page 6
Application No. 08/490,180
conclusion based on factual evidence (see In re Fine, supra,)
and the mere fact that, generally speaking, containers might be
known in the art does not provide a sufficient factual basis
for concluding that the first and second containers as set
forth in the context of the subject matter set forth in claim
34 would have been obvious within the meaning of 35 U.S.C. §
103(a). See In re GPAC Inc, 57 F.3d 1573, 1582, 35 USPQ2d
1116, 1123 (Fed. Cir. 1995) and In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967).
As to the examiner's bald assertion that "whether the
non-ferrous metal shot material is blasted against a metal body
or non-ferrous metal shot material is blasted by metal shot is
a matter of design choice," the examiner may not resort to
speculation or unfounded assumptions to supply deficiencies in
establishing a factual basis. See In re GPAC, supra, and In re
Warner, supra. In short, the subjective opinion of the
examiner as to what would or would not have been obvious,
without evidence in support thereof, does not provide a factual
basis upon which the legal conclusion of obviousness can be
reached. Instead, it is well settled that in order to
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