Appeal 2006-2937
Application 09/840,188
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).
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