Appeal No. 2005-1738 Page 3
Application No. 10/046,897
The rejection concludes:
The reference does not specifically teach washing or dipping the
udders and teats with this solution. However, a person of ordinary
skill in the art would reasonably expect that the active hops
containing solution should be administered to the skin at the site of
the infection, specifically the skin of the udders and teats. Applying
the active hops containing solution to the infected site would clearly
involve a washing or dipping means of application. Thus, it is
clearly within the skill of one of ordinary skill in the art to expand the
teaching of [Shibata] of skin application of hops containing solution
to include washing and dipping of the infected site. Therefore, an
artisan of ordinary skill would be motivated to modify the teaching
of [Shibata] to include washing and dipping the infected teats of
cows to kill pathogens using the hops solution taught by the
reference.
Id.
“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 [sic,
basis] supporting its legal conclusion of obviousness.” In re Warner, 379 F.2d
1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389 U.S. 1057
(1968) (emphasis in original).
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