Appeal No. 2002-1555 Page 6
Application No. 09/511,572
make the modification obvious unless the desirability of such
modification is suggested by the prior art. Rejections based on
§ 103(a) must rest on a factual basis based on the teachings of
the prior art. 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 appellant’s 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).
From our perspective, the examiner’s proposed combination of
Anthony with Ni or Fujii appears to be premised on impermissible
hindsight reasoning. Nor has the examiner shown that the other
references applied in the second and third stated rejections
would make up for the deficiency in the first stated rejection of
the examiner based on the teachings of Anthony together with Ni
or Fujii. On the record of this appeal, it is our view that the
examiner has not carried the burden of establishing a prima facie
case of obviousness with respect to the subject matter defined by
the appealed claims. Consequently, we reverse all of the stated
rejections.
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