Appeal No. 2005-1040 Page 4
Application No. 09/777,420
The facial indicia is considered an ornamental feature
because it does not affect the way the apparatus of Hall
works or how it is used. And since the number of
ornamental designs that can be applied is limitless, a
particular ornamental design can only be a personal
preference.
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). Even when obviousness is based on a single prior art
reference, there must be a showing of a suggestion or motivation to modify the
teachings of that reference. See In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313,
1316-17 (Fed. Cir. 2000).
In this case, the examiner has provided absolutely no evidence of a teaching or
suggestion to modify the traffic counter casing of Hall to provide the exterior surface
thereof with facial indicia of the type called for in appellants’ claims 1, 14, 21 and 25.
That the recited features are directed to aesthetic or ornamental features does not
discharge the examiner’s burden to supply evidence of a suggestion or motivation to
modify the Hall reference to arrive at the claimed invention. It follows that the rejection
of independent claims 1, 14, 21 and 25 and claims 2-13, 15-20, 22, 23 and 28 as being
unpatentable over Hall cannot be sustained.
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