Appeal No. 1999-1499
Application No. 08/764,736
led one of ordinary skill in the art to have yoke B of Borg-
Warner include a radially inwardly directed lip between the
arms of the brackets 23 and overlying bearings D, absent the
use of impermissible hindsight on the part of the examiner.
However, the examiner may not, because of doubt that the
invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies
in the factual basis for the rejection. See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied,
389 U.S. 1057 (1968). Since all the limitations of claim 17
are not taught or suggested by the applied prior art, the
decision of the examiner to reject claim 17 under 35 U.S.C.
§ 103(a) is reversed.
Since the examiner did belatedly make a new ground of
rejection in his answer (Paper No. 23, mailed December 7,
1998), and since the thrust of our position for supporting
that rejection of claims 11, 15, 16 and 18 differs
significantly from that found in the examiner's answer, we
hereby designate our affirmance of the rejection of claims 11,
18
Page: Previous 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 Next
Last modified: November 3, 2007