Appeal No. 2002-0949 Page 5
Application No. 09/514,860
35 U.S.C. § 103.2 See Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459,
467 (1966). Instead, the examiner states that “[t]he playing of two hands at the same
time but independently is considered to be the same as playing both hands one at a
time” (answer, page 3). We do not agree. While the examiner may not be impressed
with this difference, it cannot reasonably be disputed that there is a difference between
displaying the two identical hands simultaneously for play, as taught by Hachquet, and
displaying and playing a first hand of cards and then subsequently redisplaying the
same cards as a second hand and playing the second hand, as called for in appellants’
claims 1 and 5.
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. 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. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968).
Inasmuch as we find a difference between the method taught by Hachquet and
the method recited in each of claims 1 and 5 and the examiner has not offered any
explanation as to why it would have been obvious to one of ordinary skill in the art to
2 The required contents of a rejection under 35 U.S.C. § 103 are set forth in § 706.02(j) of the
Manual of Patent Examining Procedure (MPEP).
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