Ex Parte HAMDI et al - Page 4




            Appeal No.2002-1516                                                                              
            Application No. 09/052,744                                                                       


            1013, 1016, 173 USPQ 560, 562 (CCPA 1972).  Furthermore, the conclusion that the                 
            claimed subject matter is prima facie obvious must be supported by evidence, as                  
            shown by some objective teaching in the prior art or by knowledge generally available to         
            one of ordinary skill in the art that would have led that individual to combine the relevant     
            teachings of the references to arrive at the claimed invention.  See In re Fine, 837 F.2d        
            1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Rejections based on     § 103                 
            must rest on a factual basis with these facts being interpreted without hindsight                
            reconstruction of the invention from the prior art.  The examiner may not, because of            
            doubt that the invention is patentable, resort to speculation, unfounded assumption or           
            hindsight reconstruction to supply deficiencies in the factual basis for the rejection.  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 appellant's 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-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.                 
            Cir. 1988).                                                                                      
                   When determining obviousness, "the [E]xaminer can satisfy the burden of                   
            showing obviousness of the combination ‘only by showing some objective teaching in               
            the prior art or that knowledge generally available to one of ordinary skill in art would        
            lead that individual to combine the relevant teachings of the references.’"  In re  Lee,         

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