Appeal No. 1997-3340 Page 11
Application No. 08/323,500
said central mounting block." Even if one of ordinary skill in the art were to form the various
portions of the Ogino pedal as separate components attached together as suggested by the
examiner, it is not apparent to us what would have motivated such an artisan to provide the
particular arrangement of elements recited in claim 10.
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, 177-78 (CCPA 1967). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary skill
in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973 (Bd.
Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to
one of ordinary skill in the art and not from the appellant's disclosure. See, e.g., Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert.
denied, 488 U.S. 825 (1988).
As the examiner has failed to respond to appellant's argument by providing a reason
why one of ordinary skill in the art would have been led to modify the Ogino pedal to arrive at
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