Appeal No. 97-1070
Application 08/100,418
Appellants attempt to overcome these difficulties with the prior art by directly measuring crankshaft
acceleration. This feature is positively recited in all of appellants’ claims on appeal, and to say that it
would have been obvious to do so in light of a combination of three references which each individually
fail to teach or suggest measuring the acceleration directly is not plausible and would require the use of
hindsight. To combine and modify Wier, Ina, and Buck to achieve appellants’ claimed invention6
involves the application of knowledge not
clearly present in the prior art. See In re Sheckler, 438 F.2d 999, 1001, 168 USPQ 716, 717
(CCPA 1971). We conclude that there would be no motivation to combine the applied references to
Wier, Ina, and Buck to achieve the subject matter of representative claim 1 on appeal.
In view of the foregoing, the decision of the examiner rejecting claims 1 to 11, 14 to 16, 28 to
33, 37, and 38 under 35 U.S.C. § 103 is reversed.
REVERSED
6 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 gleaned only from the applicants’ disclosure, and
not only knowledge 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).
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