Appeal No. 2005-1175 Page 5
Application No. 09/727,465
for optimization dependent on application criteria, since it has been held that where the
general conditions of a claim are disclosed in the prior art, discovering the optimum or
workable ranges involves only routine skill in the prior art” (answer, page 4). The
examiner cites Kubis, directed to a threaded insert for small external diameter screws
having a trapezoidal thread, which defines diameters, thread height, root to crest
clearance and flank clearance (answer, page 3), as evidence that such parameters are
known parameters of a trapezoid thread in addition to appellant’s admission (pages 1-2
of the specification) that such parameters are disclosed in ISO standard DIN 103. We
note that Kubis does not teach or disclose the flank angle, thread diameter, thread
height, root to crest clearance and flank clearance values or ranges recited in claim 12
and, indeed, the examiner concedes that Kubis is not relied on for the specific teachings
of the optimum or workable ranges.
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, 177-78 (CCPA 1967).
The problem with the examiner’s position is that the examiner has provided no
evidence or rationale as to why one of ordinary skill in the art, seeking the optimum
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