Appeal No. 2005-2013 Page 7
Application No. 10/140,324
references or make the proposed modification in a manner so as to arrive at the claimed
invention. See In re Rouffet, 149 F.3d 1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir.
1998). Any such showing must be clear and particular. See In re Dembiczak, 175 F.3d
994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). In the present case, sufficient
evidence to establish such a suggestion is not made manifest in the Examiner’s stated
rejection based on the teachings of the applied references. We conclude that the
Examiner has failed to establish a prima facie case of obviousness with respect to the
subject matter of appealed claims 1-9 and 17-22.
Rejections based on § 103(a) must rest on a factual basis with these facts being
interpreted without hindsight reconstruction of the invention from the prior art. See In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967). Our reviewing court
has repeatedly cautioned against employing hindsight by using the Appellants’
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).
From our perspective, the Examiner's rejection appears to be premised on
impermissible hindsight reasoning. On the record of this appeal, it is our view that the
Examiner has not carried the burden of establishing a prima facie case of obviousness
with respect to the subject matter defined by the appealed claims.
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