Appeal No. 2001-1939 Page 7
Application No. 09/072,605
that, at the very least, Suzuki would have commended itself to the attention of one of
ordinary skill in the art who is attempting to solve the problem of polishing the surface of
a surgical stent in view of the fact that it is directed to smoothing the surface of a
workpiece. With regard to the argument that the only suggestion to combine the
teachings of Suzuki with those of Frantzen is found in hindsight, we wish to note that
any judgment 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). It is our opinion that proper suggestion to combine exists in this
case.
On the basis of the reasoning set forth above, we conclude that the subject
matter recited in claim 1 would have been obvious in view of claims 1-5 of Frantzen and
the teachings of Suzuki, and we will sustain the obviousness-type double patenting
rejection of claim 1 of the present application. Since the appellant has grouped claims
2, 7 and 10 with independent claim 1, from which they depend, they fall therewith.
The Rejection Under Section 102
Claims 14, 18, 19 and 20 stand rejected as being anticipated by Klein.
Anticipation under 35 U.S.C. § 102 is established only when a single prior art reference
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