Appeal No. 2003-0790 Page 5
Application No. 09/138,063
re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). Further,
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). The mere fact that the prior art could be so modified
would not have made the modification obvious unless the prior art suggested the
desirability of the modification. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430,
1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984).
In this instance, the examiner has supplied no evidence that the placement of an
adhesive layer on the rear of the photograph is an alternate equivalent to the placement
of an adhesive layer on the rigid panel 14 or 114 of Hoebel. While it appears that the
use of adhesive on the rear of the photograph would work as well as the placement of
the adhesive on the front face of the rigid panel for mounting of the photograph on the
backing panel, it is not apparent to us why one of ordinary skill in the art would resort to
such an arrangement when the placement of the adhesive on the front face of the rigid
panel, rather than on the sheet (photograph) which must be processed, whether by
traditional photograph processing or passage through a computer printer, appears to be
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