Appeal No. 1998-3322
Application No. 08/796,500
change occurs at a pre-determined level of cure as required by
each of the independent claims on appeal. Concerning this
issue, the examiner urges that combining the ingredients in
the amounts taught by the applied references would have
yielded a composition that “would apparently effect a color
change therein upon cure thereof” (answer, page 10). However,
the examiner has advanced no evidentiary support (and we
perceive none independently) for the proposition that an
adhesive composition taught or suggested by the applied prior
art would necessarily or inherently undergo a detectable color
change upon reaching a pre-determined level of cure as claimed
by the appellants. Thus, we are constrained to conclude that
the examiner’s aforequoted position must be based upon
conjecture, speculation or assumption. It is appropriate,
therefore, to remind the examiner that a rejection under
35 U.S.C. § 103 must rest on a factual basis rather than
conjecture, speculation or assumption. In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968).
In summary, none of the rejections before us on this
appeal can be sustained.
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