Ex parte BATTOCCHIO et al. - Page 4




               Appeal No. 1997-2883                                                                                               
               Application 08/379,443                                                                                             


               have suggested to one of ordinary skill in the art the obviousness of the invention as set forth in claims         

               23 and 25 to 52.  We also find that any conclusion of obviousness of the invention recited in the claims           

               on appeal would necessarily have involved the improper use of hindsight.                                           



                      In reaching our conclusion on the issues raised in this appeal, we have carefully considered                

               appellants’ specification and claims, the applied prior art, and the respective viewpoints of appellants           

               and the examiner.  As a consequence of our review, we are in general agreement with appellants (Brief,             

               pages 17 to 23) that the claims on appeal would not have been obvious to one of ordinary skill in the              

               art at the time the invention was made in light of the teachings of Jones and Karbo.  For the reasons              

               which follow, we will not sustain the decision of the examiner rejecting claims 23 and 25 to 52 under 35           

               U.S.C.  103.                                                                                                      

                      At the outset, we note that it 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, 1395, 170 USPQ 209, 212 (CCPA 1971).                                 

                      Appellants argue (Brief, page 20) that Jones and Karbo, whether taken singly or in                          

               combination, fail to teach or suggest the detection process of representative claim 23 on appeal of                


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