Appeal No. 2004-2330 Page 6
Application No. 09/986,977
In fact, aluminum is described by Manabe as unsuitable because of its poor resistance
to weathering and corrosion by attack of chemicals (column 5, first paragraph).
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, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). In light of the above, the examiner’s determination,
based upon the respective teachings of appellant and Manabe, that Manabe’s metal film
is semi-transparently formed on the base coat, is speculative at best. Accordingly,
neither of the examiner’s rejections, which are grounded in part on this determination,
can be sustained.
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