Appeal No. 2000-0965
Application No. 08/927,465
combination. In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). Given the factual situation presented
to us, it is our view that any suggestion to make the
combination suggested by the Examiner could only come from
Appellants’ own disclosure and not from any suggestions in the
references themselves.
In conclusion, we are left to speculate why one of
ordinary skill would have found it obvious to modify the
applied prior art to make the combination suggested by the
Examiner. The only reason we can discern is improper
hindsight reconstruction of Appellants’ claimed invention. In
order for us to sustain the Examiner’s rejection under 35
U.S.C. § 103, we would need to resort to speculation or
unfounded assumptions or rationales to supply deficiencies in
the factual basis of the rejection before us. In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968), reh’g denied, 390 U.S. 1000
(1968).
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