Appeal No. 1998-3023
Application No. 08/339,731
within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge
gleaned only from applicant's disclosure, such a
reconstruction is proper.” In re McLaughlin, 443 F.2d
1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Did the
examiner use knowledge gleaned only from the applicant’s
disclosure? We are of the opinion that the examiner did
and, therefore, relied upon impermissible hindsight to
combine the references to form the obviousness
rejections. Tanaka is drawn to an apparatus that gives
trimming instructions to a developer of photographs
(column 1, lines 10 to 13). Tanaka is silent in regards
to editing fingerprint images on tenprint cards. The
examiner’s motive is understandable; the claimed
invention does utilize video to store, to display and to
edit the cutout regions of the fingerprint images (e.g.,
as in claim 1) but, without the benefit of the
appellant’s disclosed and claimed invention, there would
be no logical reason to combine the disparate
technologies of the applied references. Stated
differently, we do not agree with the examiner that
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