Appeal No. 1998-1357
Application No. 08/348,744
tank in order to provide protection from the weather
(answer, page 29).
Rejections based on 35 U.S.C. § 103(a) 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). The use of such hindsight knowledge to support
an obviousness rejection under 35 U.S.C. § 103(a) is, of
course, impermissible. See, for example, W. L. Gore and
Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220
USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). In our view, the only suggestion for modifying the
two layer storage tank of Lindquist in the manner proposed by
the examiner based on the teachings of the various secondary
references applied to meet the above-noted limitations stems
from impermissible hindsight knowledge derived from the
appellants' own disclosure. It follows that we cannot sustain
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