Appeal No. 1999-0422 Page 9
Application No. 08/628,805
Further, we find no teaching or suggestion in either Hess
or Serizawa to form the wavy profile of the fins such that the
distance between two planes (E) defined by the wave peaks of
the profile is equal to or slightly larger than the width of
the grooves of the base, as required by claim 9. The
examiner's apparent reliance on the illustrations of Figures 2
and 3 of Hess for such a teaching (note answer, page 5) is
speculative at best and is thus unsound.4
For the foregoing reasons, we do not find the combined
teachings of Serizawa and Hess sufficient to have suggested
the subject matter of claim 9. Accordingly, we shall not
sustain the examiner's 35 U.S.C. § 103 rejection of claim 9,
or claims 10, 15, 16 and 18 which depend therefrom.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 9, 10, 15, 16 and 18 under 35 U.S.C. § 103 is reversed.
REVERSED
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In4
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. In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968).
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