Ex Parte Chung et al - Page 4




              Appeal No. 2005-0090                                                                                          
              Application No. 10/057,025                                                                                    


              sufficient for one of ordinary skill in the relevant art having the references before him to                  
              make the proposed combination or other modification.  See In re Lintner, 458 F.2d                             
              1013, 1016, 173 USPQ 560, 562 (CCPA 1972).  Furthermore, the conclusion that the                              
              claimed subject matter is prima facie obvious must be supported by evidence, as                               
              shown by  some objective teaching in the prior art or by knowledge generally available                        
              to one of ordinary skill in the art that would have led that individual to combine the                        
              relevant  teachings of the references to arrive at the claimed invention.  See In re Fine,                    
              837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Rejections based on                               
              § 103 must rest on a factual basis with these facts being interpreted without hindsight                       
              reconstruction of the invention from the prior art.  The examiner may not, because of                         
              doubt that the invention is patentable, resort to speculation, unfounded assumption or                        
              hindsight reconstruction to supply deficiencies in the factual basis for the rejection.  See                  
              In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967), cert.                                       
              denied, 389 U.S. 1057 (1968).  Our reviewing court has repeatedly cautioned against                           
              employing hindsight by using the appellant's disclosure as a blueprint to reconstruct the                     
              claimed invention from the isolated teachings of the prior art.  See, e.g., Grain                             
              Processing Corp. v. American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d                                    
              1788, 1792 (Fed. Cir. 1988).                                                                                  
                     When determining obviousness, "the [E]xaminer can satisfy the burden of                                
              showing obviousness of the combination ‘only by showing some objective teaching in                            

                                                             4                                                              





Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007