Appeal No. 2000-0433
Application 08/741,070
examiner has the initial duty of supplying the factual basis
for the rejection. The examiner may not, because of doubt
that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967). Our reviewing
court has repeatedly cautioned against employing hindsight by
using the appellants’ disclosure as a blueprint to reconstruct
a claimed invention from the isolated teachings in the prior
art. See e.g., Grain Processing Corp. v. America Maize-Prods.
Co., 845 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
With this background, we first consider the examiner’s
rejection of claims 1-15 and 17-19 as being unpatentable over
Korgel in view of Kaplan. In support of this rejection, the
examiner states:
Korgel et al meets the claim language except for the
reducing the size of the recess step as claimed; it is
noted that the enlarged end structure is formed only
after insertion of the haptic into the attachment hole.
Kaplan et al teaches that the process of enlarging optics
with organic liquids prior to haptic insertion then re-
reducing them by solvent removal has been known to the
art; see Col. 7, line 39 to Col. 8, line 28. Hence, it is
the Examiner’s position that it would have been obvious
to swell the optic of Korgel et al before haptic
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