Appeal No. 2005-0664 Page 7
Application No. 09/840,278
We turn finally to the rejection of claim 21 as being unpatentable over Ratcliff.
Claim 21 requires the at least one inner lid to comprise a body portion including a raised
lip disposed on at least one of the opposite edges and a top edge thereof. Ratcliff does
not disclose any such raised lip on the covers 51, 53 latched to the tray 31 disposed in
the lower segment of the fishing box. While the examiner has cited two patents on page
8 of the answer, the examiner has not pointed to any teaching or suggestion in either
Ratcliff or the patents cited on page 8 of the answer that a raised lip is necessary or
desirable to strengthen the covers 51, 52 to prevent them from buckling.
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). Evidence of a suggestion, teaching or motivation to
combine may flow from the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature of the problem to be solved,
although the suggestion more often comes from the teachings of the pertinent
references. The range of sources available, however, does not diminish the
requirement for actual evidence. That is, the showing must be clear and particular.
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,
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