Ex Parte Stewart - Page 4




              Appeal No. 2005-0170                                                                                        
              Application No. 09/755,650                                                                                  

              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                          
              the prior art or that knowledge generally available to one of ordinary skill in the 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,                            


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