Appeal No. 2006-3096
Application No. 10/116,676
sufficient for one of ordinary skill in the relevant art having the references before him to
make the proposed combination or other modification. See In re Lintner, 458 F.2d 1013,
1016, 173 USPQ 560, 562 (CCPA 1972). Furthermore, the conclusion that the 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,
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).
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