Appeal No. 2000-0588 Page 14
Application No. 08/824,110
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. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). The
mere fact that the prior art could be so modified would not have made the modification
obvious unless the prior art suggested the desirability of the modification. See In re
Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992); In re Mills,
916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The examiner has not pointed to
any teaching or suggestion in Wingate to modify the Wingate telephone to make it a toy
pager and we find none on our own. While pagers are akin to telephones in that they
are both telecommunications devices, this similarity is not sufficient, in our opinion, to
provide suggestion to modify the Wingate toy telephone so as to form a pager. From
our perspective, the only suggestion for modifying the Wingate toy as proposed by the
examiner to arrive at the subject matter of claims 6-9 is found in the luxury of hindsight
accorded one who first viewed the appellants' disclosure.
The examiner further explains on page 6 of the answer that
though the concept of “pager” has a non-specific meaning,
there is no established definition of what a pager should look
like or be sized to specific dimensions. As such, pagers are
electronic message relaying units of indeterminate size and
shape. It would have been obvious to one of ordinary skill in
the art to have provided a Wingate toy with any appropriate
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