Appeal No. 95-4246
Application 08/201,052
be used for cutting along a line or for spot work.
Appellant’s argument that the combination of Sharon and
McFee is the result of impermissible hindsight also is not
well taken. From our standpoint, no impermissible hindsight
reasoning has been relied upon by the examiner, since the
rejection takes into account only knowledge which was within
the level of ordinary skill at the time the presently claimed
invention was made, i.e., the teachings of Sharon and McFee
viewed as a whole, and does not include knowledge gleaned only
from appellants’ disclosure. See In re McLaughlin, 443 F.2d
1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
We also do not agree with appellant’s argument on pages
10-14 of the brief that the proposed combination would not
result in the claimed subject matter. The preamble recitation
of claim 18, for example, that the handpiece is “for use” in a
heart synchronized pulsed laser system, and the recitation in
the body of claim 35, for example, that the claimed structure
“acts as a handpiece for contacting a beating heart during
use,” are statements of intended use or purpose that cannot be
relied upon to distinguish the claimed handpiece over the
-9-
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