Appeal No. 2002-0363
Application No. 08/162,373
The examiner asserts that Holcombe teaches a shoe sole substantially as
claimed except for a midsole and concludes that, as it is old and conventional to
provide a midsole, it would have been obvious to provide Holcombe with a midsole to
provide better cushioning characteristics (see pages 6 and 7 in the answer).
The appellant responds that Holcombe fails to teach any midsole, let alone a
midsole as particularly claimed, and that even if a midsole were added to Holcombe, it
would not respond to the specific midsole configuration required by claim 93.
Rejections based on 35 U.S.C. § 103(a) must rest on a factual basis. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78 (CCPA 1967). 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.
In this case, the examiner has not advanced any factual basis which justifies a
conclusion that it would have been obvious to provide Holcombe’s sole with the midsole
specifically defined in claim 93. The examiner’s apparent position (see page 10 in the
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