Appeal No. 2003-1554 Page 5
Application No. 09/552,063
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). Appellant (brief, page 6) is
correct that, “[i]n order for an Examiner to rely on equivalents as a rationale supporting
an obviousness rejection, the equivalency must be recognized in the prior art.” See In
re Ruff, 256 F.2d 590, 598, 118 USPQ 340, 347 (CCPA 1958). 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).
In this case, the examiner has not supplied any evidence1 to support his
contention that the accumulator arrangement of Anderson is a known equivalent to the
arrangement taught by Hamel. We thus conclude that the examiner’s rationale in
determining that the subject matter of appellant’s claims would have been obvious is
flawed and we cannot sustain the rejections on this basis. The examiner’s rejections of
claims 2-19 under 35 U.S.C. § 103 are therefore reversed.
1 The additional references to Nelson (relied upon for its teaching of a battery-powered pump),
Bullinger (relied upon for its teaching of a wheel-driven pump for use in an auxiliary hydraulic brake
system), Streeter (relied upon for its teaching of a cylinder-operated tail gate), Bobka (relied upon for its
teaching of a cylinder-operated dump bed on a portable trailer), Tharaldson (relied upon for its teaching of
a portable grain cart auger system) and Clark (relied upon for its teaching of a reciprocating floor on a
trailer) do not overcome this deficiency.
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