Appeal No. 2006-3076 Page 7
Application No. 10/004,948
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). 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, 972 F.2d
1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992). “Broad conclusory statements
regarding the teaching of multiple references, standing alone, are not ‘evidence.’” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). “Mere denials
and conclusory statements, however, are not sufficient to establish a genuine issue of
material fact.” Dembiczak, 175 F.3d at 999-1000, 50 USPQ2d at 1617, citing
McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129,
1131 (Fed. Cir. 1993).
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the limitations as
recited in independent claim 1. With respect to independent claim 1, Appellants argue
that O’Sullivan did not meet three of the steps of the claimed limitations and that
Flansburg “does not show how information regarding the requirements for a computer
network is gathered or how the information to produce a drawing of the proposed
computer network is collected and sent to the drawing program” (Brief, p. 15). We
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