Appeal No. 1998-1251
Application 08/521,393
factual basis for its rejection. It may not, because it may
doubt that the invention is patentable, resort to speculation,
unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis. (Emphasis in original).
In re Freed, 425 F.2d 785, 788, 165 USPQ 570, 572 (CCPA 1970); In re Lunsford, 357
F.2d 385, 392, 148 USPQ 721, 726 (CCPA 1966).
The problem with the examiner’s rejection in this case is that the alleged differences
between the appellant’s claimed invention and Tuttle ‘375 have not been sufficiently
addressed. One of the factual inquiries the examiner must specifically determine under
Graham v. John Deere is the differences between the claimed invention and the prior art.
Here, it is not at all clear what the examiner regards as the differences between the
appellant’s claimed invention and the disclosure of Tuttle ‘375.
In the Grounds of Rejection section of the examiner’s answer, the examiner states
the following with respect to Tuttle ‘375:
The ‘375 reference, when compared to representative
claim 1, shows: cable shield under test 10; a coupler driver
300; an inductive coupler 100 surrounding the shield and
receiving a signal from the driver; an inductive sensor array
(200, Fig. 8) movable along the shield and a disturbance
detector 50.
The examiner’s statement does not set forth just what it is that Tuttle ‘375 does not
disclose with regard to the appellant’s claimed invention. Without that information, it is
also uncertain for just what feature the examiner is relying on Daniel in a proposed
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