Appeal No. 2002-1808 Page 3
Application No. 09/028,059
The examiner has rejected claims 1 and 3 to 9 under 35 U.S.C. § 103. We
initially note that in rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. See In re Rijckaert,
9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of
obviousness is established by presenting evidence that the reference teachings would
appear to be sufficient for one of ordinary skill in the relevant art having the references
before him to make the proposed combination or other modification. See In re Lintner,
458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion
that the claimed subject matter is prima facie obvious must be supported by evidence,
as shown by some objective teaching in the prior art or by knowledge generally
available to one of ordinary skill in the art that would have led that individual to combine
the relevant teachings of the references to arrive at the claimed invention. See In re
Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Rejections based
on § 103 must rest on a factual basis with these facts being interpreted without
hindsight reconstruction of the invention from the prior art. The examiner may not,
because of doubt that the invention is patentable, resort to speculation, unfounded
assumption or hindsight reconstruction to supply deficiencies in the factual basis for the
rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967),
cert. denied, 389 U.S. 1057 (1968). Our reviewing court has repeatedly cautioned
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