Appeal No. 1999-0616
Application 08/443,152
this only requires routine skill in the art.
[Answer, page 4.]
Legal conclusions of obviousness must be supported by
facts. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-
78 (CCPA 1967). An examiner has the initial burden of
supplying the requisite factual basis and may not, because of
doubts that the
claimed 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 his conclusion that it would have
been obvious to one of ordinary skill in the art to reverse
selected elements of Moser’s device in order to derive a
facsimile of the claimed invention. The mere fact that the
prior art could be so modified would not have made the
modification obvious unless the prior art suggested the
desirability of the modification (see In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)). In essence,
the examiner’s conclusion of obviousness is based on nothing
more than speculation.
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