Appeal No. 2001-1574
Application No. 08/856,050
hindsight reconstruction of appellants’ invention. The examiner has not pointed out,
and we do not find, any description in the Akiyama reference with respect to purpose or
function of the “recess.” Absent a teaching from the prior art that is directed to some
reason for placement of the recess, we conclude that the rejection is based on
speculation, rather than factual findings supported by evidence in the record. Cf. In re
Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir. 2001) (in a
determination of unpatentability “the Board must point to some concrete evidence in the
record in support of...[the]...findings”).
We thus do not sustain the rejection of claims 1-7 under 35 U.S.C. § 103 as
being unpatentable over appellants’ admitted prior art in view of Akiyama.
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