Appeal No. 2005-2198 Παγε 4
Application No. 10/286,942
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972). Rejections based
on 35 U.S.C. § 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, 178 (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-Products Co., 840 F.2d 902, 907, 5
USPQ2d 1788, 1792 (Fed. Cir. 1988).
The appellant argues that the examiner failed to present a prima facie case of
obviousness since the applied prior art does not suggest the claimed subject matter.
We agree.
All the claims under appeal require that the pressure surface of the support have
integrally formed convexities. The examiner properly found that each of the primary
references (i.e., Cosentino, Sessini or Harrison) does not teach the pressure surface of
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