Appeal No. 1997-0179
Application 08/251,054
The examiner asserts that it would have been obvious to choose a resistance value that would
provide the desired output from the mirrored current (Answer, pages 5 to 6), and that it would have
been obvious to set the resistance value of the load to any value necessary to achieve a desired voltage
(such as the feedback voltage) (Answer, page 6). In response, appellant states that choosing the type
of load needed in order to achieve appellant’s claimed invention would require the use of hindsight
(Reply Brief, page 4). The examiner disagrees on the basis that no hindsight is necessary to realize that
the output of Fischer will be coupled to some type of load (i.e., resistive, capacitive, inductive)
(Supplemental Answer, page 1), and that "it would have been obvious for one skilled in the art to utilize
a resistive load with the Fischer reference" (Supplemental Answer, pages 1 to 2). However, the
examiner fails to adequately explain why it would have been obvious to choose the specific voltage set
forth by appellant in the claims on appeal.
We agree with appellant that "the instant specification does not use a desired voltage but a very
specific voltage" (Reply Brief, page 4), and that just because any resistive load may be chosen in
Fischer does not mean that the specific load and voltage defined in appellant’s specification would have
been obvious. We agree with appellant’s argument that hindsight would be required in order to pick a
resistive load value as needed to provide proper voltage (Reply Brief, page 4). We also agree with4
4It must be recognized that any judgement 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, 170 USPQ 209 (CCPA
1971).
7
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