Appeal No. 1999-1757 Page 8
Application No. 08/895,637
examiner perceives as one volume separated by a valve. We
must not lose sight of the fact that the purpose of the
appellants' second volume is to produce a change in spring
rate when combined with the first volume. Like the
appellants, we see nothing in Kouda which would teach or
suggest a second volume as required by claim 1 which when
combined with the first volume produces a change in spring
rate.
In making a rejection based on 35 U.S.C. § 103, 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 or unfounded
assumptions to supply deficiencies in the factual basis. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78 (CCPA
1967), cert. denied, 389
U.S. 1057 (1968). Here the examiner has made the bald
assertion that Kouda shows the vibration control system as
claimed except for the type of shock-absorbing medium without
providing any factual basis whatsoever to support this
assertion.
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