Appeal No. 1999-2021
Application No. 08/615,836
In either case, our previous treatment of claims 1 through 19 as a single group was justified
and did not constitute an error.
Next, appellant argues (Request at page 11) that “[a]lso, the Board admits that the Examiner
used hindsight to support his rejections and holds that it is lawful to use ‘permissible hindsight’ to
combine teachings from different references.”
Appellant further quotes from our decision at page 8 that:
Appellant respectfully submits that controlling case law was
misapprehended and not applied by the Board when it stated “an artisan,
with permissible hindsight, would have been motivated to modify Arshi
with the use of Guttag to free the main processor with some of the processing
graphics.”
We disagree with the appellant’s characterization of our quote. Our reference to hindsight
in that quotation was based on the following quotation from In re McLaughlin, infra:
However, “[a]ny judgement on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it takes
into account only knowledge which was within the level of ordinary
skill in the art 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).
Therefore, we agree with the examiner’s rationale for combining the two references as stated
in the examiner’s answer at page 5 and in our decision on page 8.
Appellant further argues (Request at pages 9 to 14) that neither Arshi nor Guttag teaches the
partitioning of the specific steps of the video decoding between the hardware and the software as
claimed. We make reference to our decision at pages 6, 7 and 8 where we discuss in detail the
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