Appeal No. 2003-0491 Page 7
Application No. 09/584,173
appear to us to have suggested to one of ordinary skill in the art, seeking to utilize a
fishing rod to automatically set a hook in a fish’s mouth and catch the fish after the fish
has pulled on the line, provision of a spring-loaded reel on a fishing rod for achieving
such purpose. In light of this simple solution proposed by Creviston, there would
appear to be no reason to modify the Becker device so as to mount a fishing pole
thereto.
For the foregoing reasons, the examiner’s rejection of claim 1 as being
unpatentable over Becker in view of Creviston appears to stem from impermissible
hindsight2 using appellants’ disclosure as a template to reconstruct the invention of
claim 1. Accordingly, we cannot sustain this rejection.
Moisan provides no cure for the above-noted deficiency of the combination of
Becker and Creviston. It thus follows that we shall also not sustain the rejection of
claims 2-4 as being unpatentable over Becker in view of Creviston and Moisan.
CONCLUSION
2 Rejections based on 35 U.S.C. § 103 must rest on a factual basis. 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. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968).
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