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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