Appeal No. 2006-0635
Application No. 10/643,288
to speculation, unfounded assumptions or hindsight reconstruction
to supply deficiencies in the factual basis. Id.
In the present case, the rather imaginative rationale
advanced by the examiner to account for the acknowledged
deficiencies of Kopp vis-a-vis the lash limitations in claims 1
and 17 amounts to no more than unsupported conjecture. Moreover,
the citation of In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA
1960) for the proposition that a mere duplication of parts has no
patentable significance does not cure this evidentiary flaw. To
begin with, the inference of such a general or per se rule of
obviousness from a case turning on specific facts has no basis
in law. Furthermore, the application of such a per se rule to
reject a claim constitutes legal error because it bypasses the
particularized fact-specific inquiry required by § 103(a). See
In re Ochiai, 71 F.3d 1565, 1571, 37 USPQ2d 1127, 1132-33 (Fed.
Cir. 1995); In re Wright, 343 F.2d 761, 769-770, 145 USPQ 182,
190 (CCPA 1965). Finally, and in any event, the underlying
description of the subject lash limitations in the appellant’s
specification belies any notion that they embody a mere
duplication of parts.
Thus, Kopp does not justify the examiner’s conclusion that
the differences between the subject matter recited in independent
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