Appeal No. 2006-0059 Page 11
Application No. 10/139,397
Rejections based on § 103(a) must rest on a factual basis with these facts
being interpreted without hindsight reconstruction of the invention from the prior art.
See In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA 1967). Our
reviewing court has repeatedly cautioned against employing hindsight by using the
Appellants’ 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).
From our perspective, the Examiner's rejections appear to be premised on
impermissible hindsight reasoning. On the record of this appeal, it is our view that
the Examiner has not carried the burden of establishing a prima facie case of
obviousness with respect to the subject matter defined by the appealed claims.
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