Appeal No. 2004-1025
Application No. 09/572,674
provide no evidentiary support for the examiner’s conjecture
regarding the purported benefits of simultaneously using the
devices respectively disclosed by these references or the
recognition of these benefits by a person having ordinary skill
in the art. Rejections based on 35 U.S.C. § 103(a) 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 unfounded
assumptions as to the knowledge generally available to a person
of ordinary skill in the art and undue speculation as to what
this purported knowledge would have suggested to such a person
are no substitutes for the evidence required by law to support a
conclusion of obviousness.
As the examiner’s application of De Bruyne fails to rectify
the foregoing evidentiary deficiencies in the Koizumi and Sauer
combination, we shall not sustain the standing 35 U.S.C. § 103(a)
rejection of independent claims 1 and 9, and dependent claims 2
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