Appeal No. 1997-3835
Application No. 07/922,273
reasoning for the combination of the teachings. Therefore, this argument is not persuasive
and we will not sustain the rejection of claims 1-8.
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 1, 3,
5, 6, and 8 are neither taught nor suggested by the applied prior art in the reconstructed
combination, we cannot sustain the examiner's rejection of appealed claims 1, 3, 5, 6, and
8 under 35 U.S.C. § 103. Therefore, we will not sustain the rejection of dependent claims
2, 4 and 7.
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