Appeal No. 2002-0076 Page 10
Application No. 09/144,842
L. 497, 499, 501 (1990)). Here, the appellant admits that the aforementioned problems
"are not additional claim limitations. . . ." (Reply Br. at 6.) Although we have
considered the problems in our determination of obviousness vel non, we refuse to read
the problems into the claim.
Motivation to Combine.
The examiner finds, "[i]t would have been obvious to one of ordinary skill in the
art at the time of the invention, to provide circuitry implementing and operating both the
base unit and the shower speaker telephone of Ford in full-duplex mode as shown in
Sudo for the purpose of providing simultaneous bidirectional conversation and
eliminating problems relating to signal path switching which occur in half-duplex
speakerphones." (Final Rejection at 4.) The appellant alleges, "the Examiner has
impermissibly used the pending application as a blueprint, and is reconstructing the
invention of Claim 1 from Ford when there is no suggestion to do so." (Reply Br. at 6.)
"[A]ny obviousness inquiry necessarily involves some hindsight." Radix Corp. v.
Samuels, 13 USPQ2d 1689, 1693 (D.D.C. 1989). More specifically, "[a]ny judgment on
obviousness is . . . necessarily a reconstruction based on hindsight reasoning, but so
long as only knowledge which was within the level of ordinary skill at the time the
claimed invention was made and does not include knowledge gleaned from applicant's
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