Appeal No. 1999-0426
Application No. 08/247,894
make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed
subject matter is prima facie obvious must be supported by evidence, as shown by some
objective teaching in the prior art or by knowledge generally available to one of ordinary
skill in the art that would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on
§ 103 must rest on a factual basis with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. The examiner may not, because of doubt
that the invention is patentable, resort to speculation, unfounded assumption or hindsight
reconstruction to supply deficiencies in the factual basis for the rejection. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968).
Appellants argue that neither Koblitz nor Jervis teaches or suggests the claim
limitation that “a sealant retained by a specified wire connecting part of said wire
connecting parts, said sealant having a viscidity less than about 40000 CPS and a
hardness after solidification of less than about 50 on the Shore-D scale; wherein the
specified wire connecting part is arranged in a position nearest to the instrument
positioned at a tail end of an intruding course of water into said harness.” We agree with
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