Appeal No. 2003-1857 Page 4
Application No. 09/799,350
implicit from the prior art as a whole, rather than expressly stated in the references.
The test for an implicit showing is what the combined teachings, knowledge of one of
ordinary skill in the art, and the nature of the problem to be solved as a whole would
have suggested to those of ordinary skill in the art. See In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000). The range of sources available,
however, does not diminish the requirement for actual evidence. That is, the showing
must be clear and particular. Broad conclusory statements regarding the teaching of
references, standing alone, are not "evidence." In re Dembiczak, 175 F.3d 994, 999,
50 USPQ2d 1614, 1617 (Fed. Cir. 1999).
Additionally, 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 instance, the examiner has supplied no evidence that the proposed
change in orientation of Swick’s clip portions would provide a tighter loop or provide a
more secure hold of the branch to the wire much less that one of ordinary skill in the art
would have recognized this to be the case. From our perspective, the only suggestion
for modifying Swick’s retainer in the manner proposed by the examiner is found in the
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