Appeal No. 2003-1206
Application No. 09/773,063 Page 7
The examiner has not adequately explained why one of
ordinary skill in the art would turn to the disparate disclosures
of the applied references and significantly modify the APA device
in a fashion so as to arrive at the here claimed subject matter
based on the teachings of the applied references. Rejections
based on § 103(a) must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the
invention from 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 appellants’ 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 rejections appear to be
premised on impermissible hindsight reasoning. 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.
Accordingly, we reverse the stated rejection.
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