Appeal No. 2006-3246
Application No. 09/956,849
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).
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
5
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013