Appeal No. 1996-1699
Application No. 08/077,681
as shown by some objective teaching in the prior art or by
knowledge generally available to
one of ordinary skill in the art that would have 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, 178 (CCPA 1967), cert. denied,
389 U.S.
1057 (1968). Our reviewing court has repeatedly cautioned
against employing hindsight by using the appellants’
disclosure
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007