Appeal No. 2001-0611
Application No. 08/742,733
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). 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.
While the examiner may be correct in his assertion that it
would have been obvious to fashion the connector elements of
Goble in the form of fluted connections, he has failed to advance
any factual basis to show that this is the case. In essence, the
examiner’s determination of obviousness in this regard is based
on nothing more than pure speculation. Moreover, in that
appellants’ specification states (see page 12, last three lines)
that the flutes solve a stated problem of minimizing stress
concentrations, this claim limitation may not be dismissed as an
obvious matter of design choice without supporting evidence.
Compare In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA 1975)
(use of particular connection in lieu of those used in reference
12
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