Appeal No. 2001-2673
Application No. 09/299,470 Page 5
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 against employing hindsight by using the appellants’
disclosure as a blueprint to reconstruct the claimed invention
from the isolated teachings of the prior art. See, e.g., Grain
Processing Corp. v. American Maize-Products Co., 840 F.2d 902,
907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
The examiner's position (answer, page 3) is that the claims
are anticipated by the acknowledged prior art as represented by
appellants’ figure 17. According to the examiner (id.), the
acknowledged prior art teaches that the specific structure of the
piezoelectric actuator is well known, and that markings are used
which serve a function during assembly but which have no function
in the finished actuator (id.). According to the examiner, the
claimed device differs from the prior art only with respect to
the shape or pattern of the printed markings, and that therefore,
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007