Appeal No. 1998-2139
Application No. 08/572,727
unless the prior art suggested the desirability of the
modification." In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). After reviewing the prior art,
the examiner’s rejection and the appellants' arguments, we
agree with the appellants that the examiner has failed to show
any teaching in the prior art of the desirability of providing
arc shaped corners on the protrusions of the fishing rod
sections resulting from the combination of Akiba and Harada.
It is well settled that a rejection based on § 103 must
rest on a factual basis, with the facts being interpreted
without hindsight reconstruction of the invention from the
prior art. In making this evaluation, the examiner has the
initial duty of supplying the factual basis for the rejection
he/she advances. The examiner may not, because he/she doubts
that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967). In the present
case, absent the required factual basis on the examiner’s
part, the rejection of appellants’ claim 13 under 35 U.S.C. §
7
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