Appeal No. 2004-2160 Page 4
Application No. 09/818,851
crushed rock and the “smaller rocks” which fill the crevices between the rocks should or
must be of any particular minimum size in order to transfer vibrations. We thus find
ourselves in agreement with appellants (reply brief, pages 3-4) that the examiner’s
determination of obviousness stems from hindsight reconstruction and is not supported
by facts of record.4 Rejections based on 35 U.S.C. § 103 must rest on a factual basis.
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. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78 (CCPA
1967). The examiner’s rejection of independent claims 1 and 13, as well as claims 8-12
and 19 depending therefrom, is reversed.
4 We cannot, however, agree with appellants that “[t]he the examiner’s pronouncement of
obviousness of the aggregate circumference in excess of 5 cm because ‘said pieces will create firm
contact between the aggregate pieces in order to transfer vibrations,’ is a self-incriminating statement.”
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