Ex Parte WILHELM - Page 4




            Appeal No. 2003-1030                                                                              
            Application No. 08/820,181                                                                        


            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,          
            277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch, 972              
            F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).  "Broad conclusory                        

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