Appeal No. 2001-1608
Application 08/619,699
English-system wrench sizes, since such a modification would
have involved a mere change in the size of a component”
(answer, page 4; and pages 4 and 5). The examiner adds that
the proposed modification of each prior art fastener would
“provide simply a more versatile, economical, and compatible
fastener which affords a greater degree of user convenience”
(answer, page 6).
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). 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. Id.
The examiner’s position that the differences between the
subject matter recited in claim 4 and each of the Toth and
Anapliotis fasteners involve mere matters of size inordinately
oversimplifies these differences. As aptly pointed out in the
reply brief, the appellant “is not claiming two different
formations of two different sizes, but two different coaxial
5
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