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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