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RINEHART

As stated in In re Rinehart,

When prima facie obviousness is established and evidence is submitted in rebuttal, the decision-maker must start over. Though the burden of going forward to rebut the prima facie case remains with the applicant, the question of whether that burden has been successfully carried requires that the entire path to decision be retraced. An earlier decision should not, as it was here, be considered as set in concrete, and applicant's rebuttal evidence then be evaluated only on its knockdown ability. Analytical fixation on an earlier decision can tend to provide that decision with an undeservedly broadened umbrella effect. Prima facie obviousness is a legal conclusion, not a fact. Facts established [sic] by rebuttal evidence must be evaluated along with the facts on which the earlier conclusion was reached, not against the conclusion itself. 531 F.2d 1048, 1052 (CCPA 1976).

LITNER

A prima facie case of obviousness is made 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 substitution, combination or other modification." In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972).

TIFFIN

That would impermissibly require the Appellants to compare the claimed invention against the claimed invention. In re Tiffin, 443 F.2d 394, 399 (CCPA 1971) ("The examiner's composite process is appellants' process, and thus cannot be compared with it."). 

WARNER 

"The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis. To the extent the Patent Office rulings are so supported, there is no basis for resolving doubts against their correctness. Likewise, we may not resolve doubts in favor of the Patent Office determination when there are deficiencies in the record as to the necessary factual bases supporting its legal conclusion of obviousness."

In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) (emphasis added).


Rejections based on 35 U.S.C. § 103 must rest on a factual basis. In making such a rejection, the Examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

“[T]he precise language of 35 U.S.C. § 102 that ‘(a) person shall be entitled to a patent unless,’ concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103.” In re Warner, 379 F.2d 1011, 1016 (CCPA 1967).

In making a rejection on the basis of obviousness, the examiner has the initial duty of supplying the requisite factual basis and may not, because of doubts that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in the factual basis. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

"Where the legal conclusion [of obviousness] is not supported by facts it cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).

The examiner may not, “resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.” In re Warner, 379 F.2d 1011, 1017 (CCPA 1967), cert.denied, 389 U.S. 1057 (1968).

We will not speculate that the functions are the same just because the names are the same. It is improper to resort to speculation or unfounded assumptions to supply deficiencies in the factual basis for a rejection. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967) ("[The Patent Office] may not, because it may doubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.").

A rejection based on § 103 must rest upon a factual basis rather than conjecture or speculation. "Where the legal conclusion [of obviousness] is not supported by the facts it cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). See also In re Kahn, 441 F.3d 977, 988.

A rejection based on section 103 clearly must rest on a factual basis, and these facts must be interpreted without hindsight reconstruction of the invention from the prior art. In making this evaluation, all facts must be considered. The Patent Office has the initial duty of supplying the factual basis for its rejection. It may not, because it maydoubt that the invention is patentable, resort to speculation, unfounded assumptions or hindsight reconstruction to supply deficiencies in its factual basis.


Application of Warner, 379 F2d 1011, 1017 (CCPA 1967)


ESTABLISHING A PRIMA FACIE CASE OF OBVIOUSNESS

 
KSR
"‘rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness’" KSR Int’l. Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007) quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006).
 
[O]bviousness requires a suggestion of all the elements in a claim (CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333, 1342 (Fed. Cir. 2003)) and “a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does.” KSR Int’l Co. v. Teleflex Inc. , 550 U.S. 398, 418 (2007)

"Although predictability is a touchstone of obviousness, the ‘predictable result’ discussed in KSR refers not only to the expectation that prior art elements are capable of being physically combined, but also that the combination would have worked for its intended purpose. KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1739-40 (2007)." Depuy Spine, Inc v. Medtronic Sofamor Danek, Inc. (Fed. Cir. 2008-1240, -1253, -1401, Decided June 1, 2009).

“A factfinder should be aware, of course, of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 421 (2007).

OETIKER

The word “persuasive” is not meant to suggest Appellant bears the ultimate burden of proving patentability. “After evidence or argument is submitted by the applicant in response [to a prima facie case of unpatentability], patentability is determined on the totality of the record, by a preponderance of evidence with due consideration to persuasiveness of argument.” In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (emphasis added); see also id. at 1445—46 (“The Board explained why it was unpersuaded by [Appellant’s] arguments on appeal. We discern no irregularity in the procedure.”). My conclusion “was reached after careful consideration of the appealed claims, the evidence of obviousness relied upon by the examiner and the arguments advanced by the appellant and the examiner.” Id. at 1445 (internal quotation omitted).

“The combination of elements from nonanalogous sources, in a manner that reconstructs the applicant’s invention only with the benefit of hindsight, is insufficient to present a prima facie case of obviousness.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992).

See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992) (during examination, the examiner bears the initial burden of establishing a prima facie case of obviousness)

An Examiner’s factual finding regarding what a reference discloses must be supported by a preponderance of the evidence. See In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985) (“preponderance of the evidence is the standard that must be met by the PTO in making rejections”); see also In re Oetiker, 977 F.2d 1443, 1449 (Fed. Cir. 1992) (Plager, J., concurring) (“In rejecting an application, factual determinations by the PTO must be based on a preponderance of the evidence, and legal conclusions must be correct.”)

"In reviewing the examiner's decision on appeal, the Board must necessarily weigh all of the evidence and argument.... [T]he ultimate determination of patentability is made on the entire record."  In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). "[T]he conclusion of obviousness vel non is based on the preponderance of evidence and argument in the record." Id. at 1446.

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