Ex Parte JACKSON - Page 8

          Appeal No. 2000-0004                                       Page 8           
          Application No. 08/872,004                                                  

          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, 177 (CCPA 1967), cert. denied, 389 U.S.           
          1057 (1968).  Our reviewing court has repeatedly cautioned                  
          against employing hindsight by using the appellant's disclosure             
          as a blueprint to reconstruct the claimed invention from the                
          isolated teachings of the prior art.  See, e.g., Grain Processing           
          Corp. v. American Maize-Products Co., 840 F.2d 902, 907, 5 USPQ2d           
          1788, 1792 (Fed. Cir. 1988).                                                
               In support of this rejection, the examiner states:                     
                    The Hasselquist reference discloses a                             
                    collapsible container 10, 14, 15, which can                       
                    be employed as a stock watering tank.  It                         
                    would have been obvious to one skilled in the                     
                    art to employ the Hasselquist collapsible                         
                    container with an animal wearing the McBride                      
                    protective collar, in order to provide the                        
                    animal with drinking water while in the                           
                    field.  The sheath of McBride is physically                       
                    insertable into the empty bowl of Hasselquist                     
                    whereupon the folded sheath would provide                         
                    sidewall support. [final rejection at page                        
                    3](emphasis in original).                                         

Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007