Appeal No. 2002-0035
Application No. 08/861,918
II. The 35 U.S.C. § 103(a) rejection of claims 42 and 43
Claim 42 depends from claim 44 and adds that the seals on
either side of the flexible carrier film are fixed thereto by
vulcanizing to the carrier. Claim 43 contains similar language.
In rejecting these claims as being unpatentable over Porter,
the examiner concedes that Porter does not disclose this claim
feature. The examiner takes the position, however, that
in Howard v. Detroit Stove Works, 150 U.S. 164 (1893),
it was determined that to form in one piece an article
which has formerly been formed in two pieces and put
together involves only routine skill in the art. On
that basis, one of ordinary skill in the art would have
found it obvious to have formed the conductor track
carrier and the seals [of Porter] as an integral unit.
Further, one of ordinary skill in the art would have
readily realized that perhaps the best way to
integrally form the seals with the conductor track
carrier is to vulcanize the seals directly thereto, as
is conventional and well known in the seal art.
[Answer, pages 5-6.]
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). 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.
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