Appeal No. 2003-1036
Application No. 09/330,865
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 statements regarding the
teaching of multiple references, standing alone, are not ‘evidence.'” In re Dembiczak, 175
F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). "Mere denials and
conclusory statements, however, are not sufficient to establish a genuine issue of material
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