Appeal No. 2002-1024
Application 09/156,060
size, shape and location set forth in independent claims 1, 6 and
10 are critical in the sense that they are intended to provide
“ample space for several patrons to eat food and drink beverages
on the table and allow easy access for moving into the approach
areas and about the ball return rack when taking bowling turns”
(specification, page 3).
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 the present
case, the examiner has resorted to speculation, unfounded
assumptions and hindsight reconstruction to overcome the admitted
evidentiary deficiencies of Stirling relative to the subject
matter claimed. By way of example, the case law cited in the
final rejection for the proposition that differences in size,
shape and orientation cannot impart patentability to a claimed
invention has little, if any, relevance to the fact situation and
particular issues of obviousness here at hand. Moreover, this
approach, resting as it apparently does on so-called mechanical
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