Appeal No. 2005-2120 Page 4
Application No. 09/964,120
of the material in order to form a third process for the very same
purpose.
Further, it would have been obvious to one of ordinary skill in
the art at the time the invention was made to further look to Steffan
and utilize the instant amount of salt in Moore’s dehydration
method. One would have been motivated to do so since Steffan
teaches various salts are utilized to dehydrate collagen fibers,
which is optimally utilized at the instant amount. Furthermore, the
application of salt in the dehydration of collagen specifically versus
cartilage containing collagen would still yield the same result since
the function of salt as the drying agent would remain the same.
Id. at 5-6.
Appellants argue that the references do not provide motivation to arrive at
the combination, and that the examiner has used hindsight to combine the
references to arrive at the claimed invention. See Supplemental Appeal Brief,
pages 6-7. We agree, and the rejection is reversed.
“A rejection based on section 103 clearly must rest on a factual basis, and
these facts must be interpreted without hindsight reconstruction of the invention
from the prior art. In making this evaluation, all facts must be considered. The
Patent Office has the initial duty of supplying the factual basis for its rejection. It
may not, because it may doubt that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to supply
deficiencies in its factual basis. To the extent the Patent Office rulings are so
supported, there is no basis for resolving doubts against their correctness.
Likewise, we may not resolve doubts in favor of the Patent Office determination
when there are deficiencies in the record as to the necessary factual bases
supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d 1011,
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