Appeal No. 2004-1098
Application No. 09/658,278
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, an 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 this vein,
the examiner may not rely on so-called mechanical or per se rules
of obviousness to sidestep the fact specific analysis of claims
and prior art required by 35 U.S.C. § 103(a). In re Ochiai, 71
F.3d 1565, 1570-71, 37 USPQ2d 1127, 1132-33 (Fed. Cir. 1995); In
re Wright, 343 F.2d 761, 769-70, 145 USPQ 182, 190 (CCPA 1965).
In the present case, the examiner’s conclusion that the
subject matter recited in claim 16 would have been obvious within
the meaning of § 103(a) rests on the combination of a legally
improper per se rule of obviousness culled without foundation
from In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954), and a
series of unsubstantiated assertions concerning the scope of the
prior art in general and the Marcus reference in particular. The
mere fact that prior art may be modified in a manner proposed by
an examiner does not make the modification obvious absent a
suggestion in the prior art of the desirability of the
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007