Ex parte BARNES et al. - Page 7




          Appeal No. 1999-0276                                                        
          Application 08/283,099                                                      


          assertion.  He also has not cited any evidence in support of                
          his statement that "the known systems . . . all consider                    
          engine temperature."  It is fundamental that a rejection under              
           103 must rest on a factual basis, which the PTO has the duty              
          of supplying.  The PTO may not, because it may doubt the                    
          invention is patentable, resort to speculation, unfounded                   
          assumptions or hindsight reconstruction to supply deficiencies              
          in its factual basis.  In re Warner, 379 F.2d 1011, 1017, 154               
          USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968),              
          quoted in In re GPAC, Inc., 57 F.3d 1573, 1582, 35 USPQ2d                   
          1116, 1123 (Fed. Cir. 1995).  Here, the examiner has cited                  
          Igashira and Barnes as evidence of obviousness in rejecting                 
          claim 1, but we find no factual basis in those references to                
          support the conclusion that  the step of sensing the                        
          temperature of the engine and producing a temperature signal                
          indicative of the sensed engine temperature, as recited in the              
          claim, would have been obvious to one of ordinary skill in the              
          art; any such conclusion would appear to be based on improper               
          hindsight, derived from appellants' own disclosure.                         
               Accordingly, we will not sustain the rejection of claim                


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