Ex parte BATTAT et al. - Page 4




          Appeal No. 2000-0291                                                               
          Application 08/873,958                                                             


          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, 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).                                                                  




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