Appeal No. 1999-0288
Application No. 08/538,071 Page 18
evidence on the record. In order to sustain the examiner's
rejection under 35 U.S.C. § 103(a), we would have to resort to
speculation or unfounded assumptions to supply the deficiencies
in the factual basis of the rejection. The examiner may not
resort to speculation or unfounded assumptions to supply
deficiencies in establishing a factual basis. See
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967).
Stated differently, the subjective opinion of the examiner as to
what is or is not obvious, without evidence in support thereof,
does not provide a factual basis upon which the legal conclusion
of obviousness can be reached. Simply put, more evidence is
needed to convince us of the obviousness of the subject matter of
the claims on appeal, than for the examiner to rely upon the
examiner's own arguments. Although decided subsequent to the
mailing of the examiner's answer, our reviewing court has made
clear in In re Lee, 277 F.3d 1338, 61 USPQ2d 1430 (Fed. Cir.
2002), and In re Zurko, 111 F.3d 887, 42 USPQ2d 1476 (Fed. Cir.
2001) that rejections must be supported by substantial evidence
in the administrative record and that where the record is lacking
in evidence, this Board cannot and should not resort to unfounded
speculation. From all of the above, we therefore find that the
examiner has failed to establish a prima facie case of
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