Appeal No. 2006-0020 Παγε 5
Application No. 09/984,009
In rejecting the claims, the examiner has opined that there is no criticality to the
above-noted limitation and simply dismissed it as a matter of design choice (answer,
page 6). This approach, of course, is wholly inappropriate. It is elementary that to
support an obviousness rejection, all of the claim limitations must be taught or
suggested by the prior art applied (see In re Royka, 490 F.2d 981, 984-85, 180 USPQ
580, 582-83 (CCPA 1974)) and that all words in a claim must be considered in judging
the patentability of that claim against the prior art (In re Wilson, 424 F.2d 1382, 1385,
165 USPQ 494, 496 (CCPA 1970)).
Rejections based on 35 U.S.C. § 103 must rest on a factual basis. 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. In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968). Evidence of a suggestion, teaching or motivation to
combine may flow from the prior art references themselves, the knowledge of one of
ordinary skill in the art, or, in some cases, from the nature of the problem to be solved,
although the suggestion more often comes from the teachings of the pertinent
references. The range of sources available, however, does not diminish the
requirement for actual evidence. That is, the showing must be clear and particular.
Broad conclusory statements regarding the teaching of multiple references, standing
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