Appeal No. 2004-0893
Application No. 09/124,310 Page 14
explained with any particularity how the proposed substitution,
even if obvious, would have been suggested to be carried out in a
manner so as to result in the claimed structure. In this regard,
we note that both of the independent claims on appeal require at
least two signal generators. The examiner relied on the
microswitches of La Salmonie as corresponding to the claimed
signal generators. Yet, the examiner has proposed replacing
those microswitches with the “membrane switches” as taught by
Itoh without explaining with any detail how those substituted
membrane switches of Itoh would result in La Salmonie including
signal generators as claimed in combination with the specific
membrane structure required by appellants’ claims. See
independent claims 1 and 21.
Nor has the examiner fairly developed how the further relied
upon DeVolpi patent would cure the deficiencies in the examiner’s
exposition of the rejection before us. We note that the proposed
modification of La Salmonie involving DeVolpi apparently relates
to a dependent claim feature and, consequently, does not salvage
the examiner’s rejection from the perils discussed above.
Rejections based on § 103(a) must rest on a factual basis
with these facts being interpreted without hindsight
reconstruction of the invention from the prior art. See In re
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