Appeal No. 2000-2223
Application No. 09/040,271
would have suggested to one of ordinary skill in the art that the
reversible jackets of Loscher and/or Eastbay Catalog may be
modified in a manner that would result in the subject matter of
claims 1 or 2. In this regard, we disagree with the examiner’s
position on page 5 of the answer to the effect that the differences
between the reversible jackets of the applied references and the
appealed claims are merely obvious matters of design choice.
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). In making such
rejections, 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. Id. In the present case, the examiner has
failed to advance any factual basis to support the conclusion that
it would have been obvious to one of ordinary skill in the art to
modify the reversible jackets of Loscher or Eastbay Catalog in a
manner that would result in the subject matter of claims 1 or 2.
The mere fact that the prior art references could be so modified
would not have made the modification obvious unless the prior art
suggested the desirability of the modification (see In re Gordon,
7
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