Appeal No. 97-3289
Application 08/550,895
invention” (Answer, page 3). This conclusion is not
supportable in fact or in law. The fact is that the
appellants have stated in the specification that this
limitation results in improved function, which contradicts the
examiner’s reasoning. The law is that in order to be obvious
such a modification must have been suggested to or within the
common knowledge of one of ordinary skill in the art, and
there is no evidence of record in support of that.
For the reasons set forth above, we will not sustain
the rejection of independent claims 9 and 15 or, it follows,
of dependent claims 10-14, 16 and 17.
We have, or course, carefully considered all of the
arguments set forth by the appellants as they bear upon the
claims the rejection of which we have sustained. However,
these arguments have not been persuasive. Our position with
regard to each of them should be apparent from the foregoing
discussions. In addition, with regard to the allegation of
hindsight, we wish to note that any judgment on obviousness is
in a sense necessarily a reconstruction based upon hindsight
10
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