Ex parte SMITH et al. - Page 14




          Appeal No. 1999-0348                                      Page 14           
          Application No. 08/663,471                                                  


               In rejecting claims under 35 U.S.C. § 103, the examiner                
          bears the initial burden of presenting a prima facie case of                
          obviousness.  See In re Rijckaert, 9 F.3d 1531, 1532, 28                    
          USPQ2d 1955, 1956 (Fed. Cir. 1993).  The conclusion that the                
          claimed subject matter is prima facie obvious must be                       
          supported by evidence, as shown by some objective teaching in               
          the prior art or by knowledge generally available to one of                 
          ordinary skill in the art that would have led that individual               
          to combine the relevant teachings of the references to arrive               
          at the claimed invention.  See In re Fine, 837 F.2d 1071,                   
          1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Rejections based               
          on § 103 must rest on a factual basis with these facts being                
          interpreted without hindsight reconstruction of the invention               
          from the prior art.  The examiner may not, because of doubt                 
          that the invention is patentable, resort to speculation,                    
          unfounded assumption or hindsight reconstruction to supply                  
          deficiencies in the factual basis for the rejection.  See In                
          re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967),              
          cert. denied, 389 U.S. 1057 (1968).                                         










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