Appeal No. 2002-1058
Application 09/228,856
perpendicular to its axis. Notwithstanding these deficiencies,
the examiner, citing St. Regis Paper Co. v. Bemis Co. Inc., 549
F.2d 833, 193 USPQ 8 (7th Cir. 1977) and In re Japikse, 181 F.2d
1019, 86 USPQ 70 (CCPA 1950) for the proposition that the mere
duplication and rearrangement of the working parts of a device
involve only routine skill in the art, concludes that it would
have been obvious at the time the invention was made to a person
having ordinary skill in the art “to include a duplication of
[Scarpa’s] transfer wheel 21 and additional conveyors for the
transfer of pouches to separate locations” (answer, page 4) and
“to include/substitute well known conveyors of any type
(including direct drop bucket conveyors) in replacement or
combination of [Scarpa’s] multilane conveyor 19 . . . [and] to
align the conveyors in various positions" (answer, page 5).
Rejections based on 35 U.S.C. § 103(a) must rest on a
factual basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173,
177-78 (CCPA 1967). 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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