Appeal No. 1998-0837
Application No. 08/516,752
factual basis. See In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 177-78 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968). 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.
Id.
In the present case, the examiner has failed to advance
any factual basis to support the conclusion that it would have
been obvious to one of ordinary skill in the art to modify
applicants' admission of prior art or MacDonald in the manner
proposed. The mere fact that the prior art could be so
modified would not have made the modification obvious unless
the prior art suggested the desirability of the modification.
See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). Neither applicants' admission of prior art nor
MacDonald contain such suggestion. Similarly, Verkasalo and
Munari do not disclose "a calender hood comprising a
substantially air impervious barrier located near the paper
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