Appeal No. 2006-1308
Application No. 10/269,974
paint spray room and other rooms of a building. While the examiner may indeed
be correct that contaminated air from rooms such as paint spray rooms is typically
vented to the exterior of the building rather than into other rooms of the building,
this does not necessitate the conclusion drawn by the examiner that the fire wall 25
in which Lamb’s fire screen 24 is mounted must be an external wall of the
building. The venting of contaminated air could, for example, be effected by
ducting leading from an opening, covered by a fire screen 24, in an internal “fire
wall” of a paint spray room, through other portions of the building to a vent in
either the roof or an external wall of the building.
The examiner’s position, as stated on page 5 of the answer, that “a room
within a larger structure can reasonably be interpreted to be a ‘building’ …, each
wall being an ‘external’ wall since the outer surface of each wall would be external
to the internal space of the room (building)” is unsound. The meanings of
“building” and “external wall” are well established and would not be understood to
be met by a room and internal walls within a building.
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, 177-78 (CCPA 1967). It appears from the above that the examiner’s
determination that the subject matter of appellant’s claims, and in particular the
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