Appeal No. 2004-1025
Application No. 09/572,674
themselves, but can also be found in the knowledge generally
available to one of ordinary skill in the art. The examiner then
applies this principle to the present case with the following
explanation:
A better understanding of what knowledge would have
been available can be obtained by examining the problem
that each reference solves. For instance, Sauer’s
invention allows individuals without use of their hands
to perform a great variety of manual tasks such as
turning the pages of a book. Koizumi’s invention, on
the other hand, provides the same individuals with a
much improved method and apparatus for keyboard input.
Accordingly, it would have been known that both
inventions greatly benefit severely handicapped
individuals. Furthermore, using both of them at various
times throughout the day, or even simultaneously, would
have provided the individuals with the freedom to
perform numerous activities without the help of
attendants. However, it would have been immediately
recognized that an individual could not in fact have
used the inventions simultaneously because it would
have been extremely uncomfortable to hold Sauer’s mouth
stick and Koizumi’s operating port in one’s mouth at
the same time. This conclusion is not based on
improper hindsight reasoning, but rather a logical
analysis of the functional capabilities of each
invention. One of ordinary skill in the art,
furthermore, would have drawn the same conclusion with
the two inventions before them. The problem would have
then remained as to how a handicapped individual could
operate a computer and still perform other routine, and
sometimes critical, activities. The obvious solution
would have been to combine the two inventions into one
[answer, pages 7 and 8].
Notwithstanding the examiner’s assertion to the contrary,
the foregoing rationalization is a classic example of improper
hindsight reasoning. The fair teachings of Koizumi and Sauer
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