Ex Parte Macheel et al - Page 9




              Appeal No. 2006-0562                                                                                      
              Application No. 09/952,588                                                                                


              claimed subject matter is prima facie obvious must be supported by evidence, as                           
              shown by some objective teaching in the prior art or by knowledge generally available to                  
              one of ordinary skill in the art that would have led that individual to combine the relevant              
              teachings of the references to arrive at the claimed invention.  See In re Fine, 837 F.2d                 
              1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).  Rejections based on  § 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, 177 (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-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d                                
              1788, 1792 (Fed. Cir. 1988).                                                                              
                     When determining obviousness, “the [E]xaminer can satisfy the burden of                            
              showing obviousness of the combination ‘only by showing some objective teaching in                        
              the prior art or that knowledge generally available to one of ordinary skill in the art would             
              lead that individual to combine the relevant teachings of the references.’”  In re  Lee,                  
              277 F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch,                          

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