Appeal No. 2001-1225 Page 8
Application No. 09/019,693
be apparent from the explanations we have offered in support of our conclusions. In
addition, we regard the use of gloves by game-players to protect the hands to be an
obvious expedient well within common knowledge and common sense of one of ordinary
skill in the art (In re Bozek, supra). Finally, any judgment on obviousness is in a sense
necessarily a reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the time the claimed
invention was made, and does not include knowledge gleaned only from the applicant's
disclosure, such a reconstruction is proper (see In re McLaughlin, 443 F.2d 1392, 1395,
170 USPQ 209, 212 (CCPA 1971)). We believe that to be the case here.
With regard to claim 4, the appellant points out that the examiner has cited no
evidence for his conclusion that the claimed shape would have been a matter of design
choice. It is asserted that when the paddle resembles the shape of a small bowling pin, as
is recited in claim 4, “significantly greater numbers of potential interactions” with the ball
are provided, which enhances the game, and therefore this feature cannot be attributed to
design choice (see Paper No. 9, page 10). We are persuaded by this argument that a
prima facie case of obviousness is lacking with regard to claim 4, and we will not sustain
the rejection of claim 4 or of claim 5, which depends therefrom. The teachings of Sexton,
which additionally were cited against claim 6, and those of Melton, added with regard to
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