Appeal No. 1997-3330
Application No. 08/271,870
reasonably skilled in the art. In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438, 1442
(Fed. Cir. 1991).
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 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).
In addition, the Federal Circuit states that "[the] mere fact that the prior art may be
modified in the manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the modification." In re Fritch, 972
F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
In the present case the examiner has failed to provide a fact based explanation
premised on the correct legal standard. It appears that the only reason, suggestion or
motivation for preparing the required monoclonal antibodies and using them in a method
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