Appeal No. 2003-0539
Application No. 09/188,702
Discussion
Rejections based on 35 U.S.C. § 103 must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967), cert. denied, 389 U.S. 1057 (1968). 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. Id.
In the present case, the examiner has identified an alleged
difference between the applied prior art and the claimed invention,
namely, the shape of the holes in the connector. Hence, the issue,
as framed by the examiner, is whether it would have been obvious to
one of ordinary skill in the art “to modify the shape of the holes
[of Glickman’s Figure 25 connector element] to conform to the shape
of [a] desired connector” (answer, page 3-4). Like appellants, we
believe that the examiner has failed to advance any factual basis
to support the conclusion that it would have been obvious to one of
ordinary skill in the art to modify the shape of the holes of
Glickman’s’ Figure 25 connector. The mere fact that the prior art
could be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the modification
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