Appeal No. 2003-0729
Application 08/914,346
In the first approach, the examiner submits that the claim
limitations at issue are
considered obvious in view of the common knowledge of
those in the brewing art. It is notoriously well known
that the filtration step of the mash goes through
several stages whereby the mash bed is created and then
the wort’s flow rate is increased once the desired
clarity is obtained. It would have been obvious to
those of ordinary skill in the art to input various
flow rates into an automated lautering system so as to
use the automation inherent capability of reducing the
necessary manpower required to filter a mash [answer,
page 4].
This position is fatally flawed due to the examiner’s
failure to advance any evidence substantiating the purported
notoriously well known and common knowledge in the art used to
justify the foregoing rationalization of obviousness. 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.
In the second approach, the examiner looks to Seborg and
states that “[w]hile it is considered that the use of automatic
controllers that operate as claimed are notoriously well known,
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