Appeal No. 2006-3221
Application No. 09/955,457
OPINION
In reaching our decision in this appeal, we have given careful consideration to
Appellants’ specification and claims, to the applied prior art references, and to the respective
positions articulated by Appellants and the Examiner. As a consequence of our review, we make
the determinations that follow.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is established by
presenting evidence that the reference teachings would appear to be 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). 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).
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