Ex Parte Belesimo - Page 4




               Appeal No. 2005-2560                                                                                                  
               Application No. 10/123,447                                                                                            


               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 § 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, 177 (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-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed.                                      
               Cir. 1988).                                                                                                           
               When determining obviousness, “the [E]xaminer can satisfy the burden of showing                                       
               obviousness of the combination `only by showing some objective teaching in the prior                                  
               art or that knowledge generally available to one of ordinary skill in the art would lead                              
               that individual to combine the relevant teachings of the references.’”  In re  Lee, 277                               
               F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,                                          

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