Appeal No. 1997-1737 Page 4
Application No. 08/330,168
have led one of ordinary skill in the art 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) and In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Rejections based on 35
U.S.C. § 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).
In the obviousness rejection before us in this appeal,
the examiner combined three patents together to arrive at the
admitted prior art. The appellants have not contested the1
examiner's combination of the three patents. The examiner
1The appellants' Figure 1 is admitted prior art. In
addition, the preamble part of the appellants' Jepson-styled
claims 1 and 5 are admitted to be prior art. See 37 CFR §
1.75(e).
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