Appeal No. 2003-138709
Application /479,576
transported. Based on these considerations, it is
believed that one of ordinary skill would be able to
determine through routine experimentation that
providing tires of a diameter of about 15-32 cm, wall
depth of 5-10 cm, and a footprint of 4-13 cm would be
appropriate [final rejection, page 2 and page 3].
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 present case, the rationale employed by the examiner
to supply the above noted dimensional deficiencies of Halstead
and Greene relative to the subject matter recited in claim 1
finds little, if any, factual support in the fair teachings of
these references, and instead rests essentially on speculation,
unfounded assumptions and hindsight reconstruction. Accordingly,
we shall not sustain the standing 35 U.S.C. § 103(a) rejection of
claim 1, and dependent claims 2, 3 and 5, as being unpatentable
over Halstead, or the standing 35 U.S.C. § 103(a) rejection of
claim 1, and dependent claims 2 through 5, as being unpatentable
over Greene in view of Halstead.
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