Appeal No. 2001-0291 Page 10
Application No. 08/772,559
described in the reference, and that it would be so recognized
by persons of ordinary skill. Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991). The examiner has not presented any factual basis, and
we discern none on our own, to support the determination that
the barrier of Brown or Martin inherently has an effective
depth within the range recited in claim 1.
Accordingly, we shall not sustain the examiner’s
rejections of claims 1-12 and 14-17 as being anticipated by
Brown and claims 1-17 as being anticipated by Martin.
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).
Discovery of an optimum value of a result effective
variable is ordinarily within the skill of the art. See In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) and
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