Appeal No. 95-4386
Application 08/127,139
displaying this past information either alone or with ship track and/or longitude/latitude data. This
feature is positively recited in appellants’ representative claim 16, as
well as all other claims on appeal. To say that it would have been obvious to use past underlying
transient objects and/or past underwater conditions to find fish, in light of references and admitted prior
art which fail to teach or suggest such, is not plausible and would require recourse to appellants’
disclosure, i.e., the use of hindsight. To modify Suzuki to achieve appellants’ claimed7
invention involves the application of knowledge and motivation not clearly present in the prior art. See
In re Sheckler, 438 F.2d 999, 1001, 168 USPQ 716, 717 (CCPA 1971).
While the examiner asserts that using past underlying transient objects and/or past underwater
conditions to find fish would have been within the level of skill of the ordinary artisan (Answer, page 9),
the applied prior art fails to show such. The problem of needing past underwater object and/or
conditions data to find fish was not recognized in the prior art. As correctly stated by appellants (Brief,
page 22; Reply, pages 2 to 4 and 7 to 8), the use of such data in finding fish is not necessary in Suzuki
(i.e., the prior art "taught away" from using such data). We conclude that there would have been no
7 We note that any judgement on obviousness is in a sense necessarily a reconstruction based upon
hindsight reasoning. But when it takes into account knowledge and motivation gleaned only from the applicant’s
disclosure, and not only knowledge and motivation which was within the level of ordinary skill at the time the
claimed invention was made, such a reconstruction is improper and is said to employ hindsight. See In re
McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971).
-7-7
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