Ex Parte Yang et al - Page 7




                Appeal No. 2005-0116                                                                                                       
                Application No. 10/109,390                                                                                                 

                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                                         
                the prior art or that knowledge generally available to one of ordinary skill in art would                                  
                lead that individual to combine the relevant teachings of the references.’"  In re  Lee,                                   
                277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch, 972                                       
                F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).  "Broad conclusory                                                 
                statements regarding the teaching of multiple references, standing alone, are not                                          
                ‘evidence.'”  In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.                                          
                1999). "Mere denials and conclusory statements, however, are not sufficient to                                             





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