Appeal No. 1999-2213
Application No. 08/641,956
Appellant further argues that there is no motivation to combine the teachings of
[Bradbury and Norman. (See brief at page 5.) We agree with appellant that the
examiner has not shown a convincing line of reasoning to further miniaturize the system
Bradbury to the size and capability of the portable units of Norman as the examiner
suggests.
“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 1 and its
dependent claims 2-13.
Independent claim 14 contains similar limitation as claim 1; therefore, we will not
sustain the rejection of claim 14 and its dependent claims 15-18.
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