Appeal No. 1999-2816 Page 6
Application No. 08/064,052
Specifically, Bird does not address the increased lubricity component of the
claimed invention nor does Bird teach a single-use disposable device in the
context of the claimed invention.
To make up for these deficiencies in Bird, the examiner simply concludes
that the invention would have been obvious, with no factual evidence other than
appellant’s disclosure and declaration to support her position. This however, is
not sufficient to meet the examiner’s burden5 of establishing a prima facie case
of obviousness. “The Patent Office has the initial duty of supplying the factual
basis for its rejection. It may not, because it may doubt that the invention is
patentable, resort to speculation, unfounded assumptions or hindsight
reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
On this record, it is our opinion that the examiner has fallen victim to the
insidious effect of hindsight syndrome wherein that which only the inventor
taught is used against its teacher. Cf. W.L. Gore & Associates, Inc. v. Garlock,
Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983).
Accordingly, we reverse the rejection of claims 77, 79-81, 83-86, 88 and
89 under 35 U.S.C. § 103 as being unpatentable over Bird.
REVERSED
5 In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007