Appeal No. 98-2520
Application 08/613,792
impermissible hindsight derived from appellant’s own
disclosure and not on the fair teachings or suggestions of the
prior art itself as such would have been understood by one of
ordinary skill in the art at the time of appellant’s
invention.
It is well settled that 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).
Appellant's brief, at pages 12 through 14, makes
reference to a declaration by David Hallford (copy attached to
the brief as Exhibit A), which declaration purports to
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