Appeal No. 1999-1738 Page 6
Application No. 08/854,516
references are capable of increasing the cycle time as one desires" and asserts that it would
have been obvious to operate the inlet and outlet valves of any of Houston, Gross and Klobucar
in the manner claimed in order to efficiently cool the regenerative thermal oxidizer (answer,
pages 3-5).
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. 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 reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
While the examiner may be correct that the prior art apparatus is capable of increasing
the cycle time as desired, none of the applied references teaches or suggests a method of
operation in this manner. The mere fact that the prior art could be so modified would not have
made the modification obvious unless the prior art suggested the desirability of the modification.
See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In this instance, the examiner
has adduced no evidence that one of ordinary skill in the art would have appreciated that
increasing the cycle time of the heat exchanger inlet/outlet valves would improve the rate of
cool-down of the regenerator or that such a technique was known in the art at the time of the
appellant's invention for rapid cool-down of a regenerative thermal oxidizer. Therefore, it
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