Appeal No. 99-0196
Application 08/270,742
the condenser to a cooling water supply from an existing in-
place water supply dedicated for another use. In this regard,
Lawrence makes no mention of retrofitting or of a cooling
tower. The examiner’s conclusion that Lawrence nevertheless
would have rendered the retrofitting method recited in claim 1
obvious within the meaning of 35 U.S.C. § 103 (see pages 3 and
4 in the answer) is not well taken.
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, the examiner has failed to advance
any factual basis to support a conclusion that the foregoing
differences between the subject matter recited in claim 1 and
Lawrence are such that the subject matter as a whole would
have been obvious at the time the invention was made to a
person having ordinary skill in the art. Instead, the
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