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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