Appeal No. 1999-1763
Application No. 08/834,931
3. A rejection based on 35 U.S.C. § 103 must rest on a
factual basis, with the facts being interpreted without
hindsight reconstruction of the invention from the prior art.
In making this evaluation, the examiner has the initial duty
of supplying the factual basis for the rejection he advances.
He may not, because he doubts that the invention is
patentable, resort to speculation, unfounded assumptions or
hindsight reconstruction to supply deficiencies in the factual
basis. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). In the
instant application, to make such a modification would be
contrary to Price’s objective, i.e., quickly and efficiently
separating the worms from the thin (2mm) layer of biomass.
Clearly, the problem of thorough and efficient composting of
the biomass by complete digestion of the biomass by the worms
is not contemplated by the Price reference. The examiner has
impermissibly drawn from appellant’s own teaching and fallen
victim to what our reviewing Court has called “the insidious
effect of a hindsight syndrome wherein that which only the
inventor has taught is used against its teacher.” W.L. Gore &
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