Appeal No. 2003-0455
Application No. 09/438,969
In responding to appellants’ argument, the examiner further
contends (answer, page 3) that “to use new parts rather that used
parts for achieving longer service life of articles is a matter of
common sense which anyone would do for that desired result, and is
not a matter of impermissible hindsight.”
Discussion
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). Moreover, while common knowledge and common sense may be
applied to the analysis of evidence relied upon in making a
rejection under 35 U.S.C. § 103, they are not a substitute for
evidence. In re Lee, 277 F.3d 1338, 1345, 61 USPQ2d 1430, 1435
(Fed. Cir. 2002).
In the present case, the examiner concedes that AAPA is
deficient in that it does not disclose a method of repairing
turbine nozzle segments that involves separating a first singlet
from a second singlet and then joining the first singlet to a
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