Appeal No. 2001-0516
Application No. 08/834,073
Examiner must not only make requisite findings, based on the
evidence of record, but must also explain the reasoning by which
the findings are deemed to support the asserted conclusion. See
In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34 (Fed.
Cir. 2002).
We are further of the view that even assuming, arguendo,
that the disclosure of Kuboyama could be interpreted as
describing the claimed mask selection feature, there is no
indication from the Examiner as to how and in what manner the
disclosure of the admitted prior art would be modified by
Kuboyama to arrive at the particulars of Appellant’s invention as
set forth in independent claims 1, 13, and 19. In order for us
to sustain the Examiner’s rejection under 35 U.S.C. § 103, we
would need to resort to impermissible speculation or unfounded
assumptions or rationales to supply deficiencies in the factual
basis of the rejection before us. In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968), reh’g denied, 390 U.S. 1000 (1968).
In view of the above discussion, it is our view that, since
all of the limitations of the appealed claims are not taught or
suggested by the applied prior art references, the Examiner has
not established a prima facie case of obviousness. Accordingly,
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