Appeal No. 2001-0158 Page 4
Application No. 08/873,250
objective teaching in the prior art or by knowledge generally available to one of ordinary
skill in the art that would have led that individual to combine the relevant teachings of the
references to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based on § 103 must rest on a factual
basis with these facts being interpreted without hindsight reconstruction of the invention
from the prior art. The examiner may not, because of doubt that the invention is
patentable, resort to speculation, unfounded assumption or hindsight reconstruction to
supply deficiencies in the factual basis for the rejection. See In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968). Our
reviewing court has repeatedly cautioned against employing hindsight by using the
appellant's disclosure as a blueprint to reconstruct the claimed invention from the
isolated teachings of the prior art. See, e.g., Grain Processing Corp. v. American
Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
With this as background, we analyze the prior art applied by the examiner in the
rejection of the claims on appeal. In support of the rejection, the examiner states:
Iwakiri discloses the claimed invention except for the multiple
positioning units, slicing units, processing units and final
treatment units being integrated together and controlled by a
computer . . . . It would have been obvious to one having
ordinary skill in the art at the time the invention was made to
provide multiple units for increasing productivity, since it has
been held that the mere duplication of the essential working
parts of a system device involves only routine skill in the art
[final rejection at page 2].
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