Appeal No. 1999-1050 Page 4
Application No. 08/440,458
from materials based on the building structure and any anticipated seismic
event in order to protect a building structure (Answer, pages 3-4).
The appellants dispute this conclusion on the basis that the examiner has not provided any
factual evidence in support thereof.
We find ourselves in agreement with the appellants. Rejections under 35 U.S.C. §
103 must rest on a factual basis, and in making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded assumptions or hindsight
1
reconstruction to supply deficiencies in the factual basis. In the present case, the
examiner has not provided any evidence that it was "known in the art" to engineer an
elastomer for use in a seismic damping system on the basis of the factors recited in the
claim. On this basis, the rejection is fatally defective.
Another deficiency also exists in the rejection of claim 1. It is in regard to the final
step, which is
providing for dissipation of heat generated in said elastomer during the
seismic event sufficiently to prevent degradation of the damping properties
of the elastomer (emphasis added).
It apparently is the examiner's position that this feature is taught by Buckle, but we agree
with the appellants that it is not. In the Buckle system, energy, mostly in the form of heat, is
1In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert
denied, 389 U.S. 1057 (1968).
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007