Ex parte MUNEKI et al. - Page 7




          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.                
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