Ex Parte Hareland et al - Page 14




              Appeal No. 2005-2695                                                                                      
              Application No. 10/280,926                                                                                


              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 § 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                        




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