Appeal No. 2003-1968 Page 6
Application No. 09/327,963
Chang in a manner so as to arrive at the claimed subject matter
with a reasonable expectation of success in so doing.
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 rejection appears 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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