Ex parte BUCHANAN - Page 5




               Appeal No. 2000-0522                                                                                                 
               Application No. 08/934,826                                                                                           


                       Rejections based on 35 U.S.C. § 103 must rest on a factual basis.  In 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, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).                                       
               Evidence of a suggestion, teaching or motivation to combine may flow from the prior art                              
               references themselves, the knowledge of one of ordinary skill in the art, or, in some cases,                         
               from the nature of the problem to be solved, although the suggestion more often comes from                           
               the teachings of the pertinent references.  The range of sources available, however, does not                        
               diminish the requirement for actual evidence.  In re Dembiczak, 175 F.3d 994, 999, 50                                
               USPQ2d 1614, 1617 (Fed. Cir. 1999).  Even when obviousness is based on a single prior art                            
               reference, there must be a showing of a suggestion or motivation to modify the teachings of that                     
               reference.  See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir.                                
               2000).                                                                                                               
                       We do not share the examiner's opinion that the modification of Akai to make the ratio of the                

               height of the sides to the larger width of the bottom less than 2 to 1 involves a mere change in size of a           

               component.  The modification proposed by the examiner to meet the claimed ratio would involve                        

               modification of one dimension relative to another.  Moreover, as evidenced by the appellant's                        

               specification (page 4, lines 1-5), the appellant's selection of a height-to-width ratio within the claimed           

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