Appeal No. 2004-0526
Application No. 09/981,975
rejection, page 2; incorporated by reference into the
examiner’s answer.]
The examiner further expands upon this position in the “Response to
Argument” section of the answer as follows:
Appellants also assert that neither reference
“suggests” the use of equal radii, however this again is
not the basis for the rejection.
The rejection is based upon the well established
fact that one skilled in the art would clearly know what
size to make the drive head of the tool to fit the
particular situation . . . . Therefore merely changing
the size of the radii would result in the well known and
obvious situation that the point of engagement of the
flat surface would change making for a different point of
engagement with the workpiece as desired. This is
clearly as [sic, a] well known result of change in size
and thus does not in and of itself lead to patentability.
[Answer, pages 3-4.]
In considering the merits of the rejection, we note that a
rejection based on § 103 must rest on a factual basis, with the
facts being interpreted without hindsight reconstruction of the
invention from the prior art. In making this evaluation, the
examiner has the initial duty of supplying the factual basis for
the rejection he advances. He may not, because he 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). In the present case, the examiner has failed
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