Appeal No. 2001-0550
Application No. 09/030,792
Concerning anticipation, the examiner has not directed us to
any disclosure in Spina that expressly states that the enzyme
solution is heated, nor has the examiner apprised us of any
evidence or scientific reasoning that would form a basis for
concluding that Spina’s enzyme solution necessarily is heated.
In this matter, we again note that possibilities or probabilities
are not enough. In re Oelrich, 666 F.2d at 581, 212 USPQ at 326.
Accordingly, Spina does not anticipate the step of claim 1 of
heating the biocompatible fluid.
As to obviousness, rejections based on 35 U.S.C. § 103 must
rest on a factual basis. In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 177-78 (CCPA 1967), cert. denied, 389 U.S. 1057 (1968),
reh’g denied, 390 U.S. 1000 (1968). 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. Here, the examiner has not advanced any factual
basis to support the conclusion that it would have been obvious
to one of ordinary skill in the art to heat the enzyme solution
of Spina prior to its introduction in the eye. More
particularly, even if we accept the examiner’s assertion that it
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