Appeal No. 1999-2207
Application No. 08/967,152
the various placements of the varistor relative to the thermal fuse and we will not speculate
as to the teachings of the reference. “The Patent Office has the initial duty of supplying the
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.” In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 174 (CCPA 1967). Therefore, we find that the examiner has not established a prima
facie case of obviousness, and we will not sustain the rejection of independent claim 9 and
its dependent claims 10 and 11.
With respect to independent claim 14, the examiner maintains that the placement of
the end with the thermal fuse therein would be mounted away from the printed circuit board
and the other end of the fuse being mounted proximate to the printed circuit board. The
thermal element being mounted adjacent the geometric center of the varistor is again
maintained as an obvious “design choice,” and the skilled artisan would have been
motivated to modify Allina to position the thermal fuse to any position. (See answer at
page 4.) We disagree with the examiner and again find that the examiner is speculating
on the teachings of Allina. The examiner further maintains that more than a mere
rearrangement of parts is necessary for patentability. (See answer at page 5.) We agree
with the examiner, but find that the examiner has not provided a convincing line of
reasoning for modifying the teachings of Allina to place the circuit elements in the
respective positions as recited in independent claim 14. The examiner maintains that as
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