Appeal No. 2004-0664
Application 09/756,683
factual support in the fair teachings of Leifeld. Indeed, the examiner’s threshold finding
that Leifeld meets the limitations in claims 1 and 2 relating to the detection of useful
fibers and empty locations in the web and the generation of signals representative
thereof also lacks evidentiary support. 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). 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’s position is rife
with speculation and unfounded assumptions as to both the teachings of Leifeld and
the suggestions that one of ordinary skill in the art would have derived therefrom.
Thus, Leifeld does not provide the evidentiary basis necessary to conclude that
the differences between the subject matter recited in claims 1 and 2 and the prior art
are such that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art. Accordingly, we shall
not sustain the standing 35 U.S.C. § 103(a) rejection of independent claims 1 and 2,
and dependent claims 3 through 14, as being unpatentable over Leifeld.
III. The 35 U.S.C. § 103(a) rejection of claim 1 as being unpatentable over Shofner
Shofner discloses a web evaluation apparatus and method which are similar in
many respects to those disclosed by Leifeld. In Shofner’s words:
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