Ex Parte Roskin - Page 5




                Appeal No. 2005-1238                                                                               Page 5                    
                Application No. 09/874,031                                                                                                   



                sufficient for one of ordinary skill in the relevant art having the references before him to                                 
                make the proposed combination or other modification.  See In re Lintner, 458 F.2d                                            
                1013, 1016, 173 USPQ 560, 562 (CCPA 1972).  Furthermore, the conclusion that the                                             
                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 35 U.S.C.                                             
                § 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, 178 (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-Products Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir.                                            
                1988).                                                                                                                       










Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007