Appeal No. 1998-0408
Application No. 08/176,861
explanation as to why such a method would inherently result
from following the teachings of the applied references.
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).
For the reasons discussed above, it appears to us that
the examiner's obviousness rejection of claims 20-22 and 28
stems from such speculation, unfounded assumptions or
hindsight reconstruction. Accordingly, we cannot sustain the
examiner's 35 U.S.C. § 103 rejection of these claims.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-12 and 20-28 under 35 U.S.C. § 112, second paragraph,
is affirmed as to claims 1-12 and 23-27 and reversed as to
claims 20-22 and 28. The examiner's decision to reject claims
1-4, 10-12, 20-22 and 26-28 under 35 U.S.C. § 103 is reversed.
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