Appeal No. 2005-2694
Application No. 10/208,631
cannot be a basis for patentability, since where
patentability is said to be based upon particular chosen
dimensions or upon another variable recited in a claim,
the applicant must show that the chosen dimensions are
critical. There had been no evidence submitted during
the prosecution of the application, that any of the
recited dimensions, sizes, and ratios are a critical
factor to the invention, or that such values for the
sizing of the mesh tube produces unexpectedly good
results [answer, page 6].
Rejections based on 35 U.S.C. § 103(a) must rest on a factual
basis. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177-78
(CCPA 1967). In making such a rejection, the examiner has the
initial duty of supplying the requisite factual basis and may not,
because of doubts that the invention is patentable, resort to
speculation, unfounded assumptions or hindsight reconstruction to
supply deficiencies in the factual basis. Id.
In the present case, the combined teachings of Albright and
Grabhorn do not supply the factual basis necessary to support a
conclusion of obviousness with respect to the subject matter
recited in claims 1, 113 and 114.
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