Appeal No. 2000-0093
Application No. 08/874,812
undercut or hidden interior surfaces.[4] However, it is [sic, was] known that
the multiple axises [sic] cutting machine is [sic, was] commercial[ly]
available. It would have been obvious to use the multiple axises [sic]
cutting machine in the apparatus of [the] cited prior art references for
making a pattern of complex shape if that particular complex shape of
casting is designated [final rejection, page 3].
Rejections based on 35 U.S.C. § 103(a) must rest on a factual basis. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78 (CCPA 1967). In making such a
rejection, 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,
unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual
basis. Id.
In the present case, the examiner has failed to advance any factual support for
the rationale employed to cure the acknowledged deficiencies of the Tamura references
with respect to the subject matter recited in independent claims 1, 8, 13
and 26. While multiple-axis milling machines may have been known in the art at the
time of the appellants’ invention, there is nothing in either Tamura reference which
would have suggested modifying the methods respectively disclosed therein by using
such a machine to carve interior surfaces of the sort required by these claims. This lack
of suggestion belies the examiner’s conclusion that the differences between the subject
4 In the answer, the examiner makes the contradictory statement that “[t]he interior surfaces of
both Mazda [Tamura] references are considered as free-form cavity since they do not have surface
generated as a result of revolving about an axis” (page 4). According to Webster’s Third New
International Dictionary (G. & C. Merriam Co. 1971), the term “free form” means “an asymmetrical
biomorphic and usu. non-rectilinear shape”. Neither Tamura reference discloses an interior surface
having such a shape.
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