Appeal No. 1997-0605
Application No. 08/551,981
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 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). Since all the limitations of independent claims 13 are neither taught nor
suggested by the applied prior art in the reconstructed combination, we cannot sustain the
examiner's rejection of independent claims 13 and 14 under 35 U.S.C. § 103.
Appellant argues that the prior art to Konishi does not teach or suggest the last two
clauses of claims 13 and 14 with respect to selecting the transistors. (See brief at page 5.)
We agree with appellant. The examiner equates the selection of the transistors and their
resistances to be merely a design expedient for a skilled artisan. (See answer at pages 4
and 5.) The examiner relies upon Yoshino to provide a teaching concerning the threshold and
the relationship between the width and length of transistors. We agree with
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