Appeal No. 2000-1934 Page 11
Application No. 08/779,420
Rejection (4)
Claim 6 depends from claim 1 and further recites an
obturator dimensioned to be slidably receivable in the suction
lumen. The examiner concedes that such an obturator is not
disclosed by Abramson but contends that it would have been
obvious to one skilled in the art to insert any medical
instrument, including an obturator, in any of the lumens of
Abramson's catheter, depending on the procedure being
performed (answer, p. 6). The examiner's rejection lacks any
explanation or evidence as to why one skilled in the art would
have been led to provide an obturator dimensioned to be
slidably receivable in the suction lumen of Abramson as
recited in claim 6.
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). In this instance,
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