Appeal No. 2004-1920 Page 6
Application No. 09/302,1999
19 impacts the lower surface of flange 16, and rotating force is applied by twisting
hammer 6, thus causing the stem to be rotated by the mated flats 11 and 20.
In the Moeller device, the boss attached to the stem is provided with a flat area,
and thus it is not annular, as is required by claim 1. However, it is the examiner’s view
that it would have been obvious to one of ordinary skill in the art to modify Moeller by
removing this flat area from the boss and presumably from the center passage of the
hammer because the omission of an element and its function “involves only routine skill
in the art” (Answer, page 5). In the present case, we cannot agree.
An object of the Moeller invention is “to provide a side percussion tool that is
equally effective for driving operations, for pulling operations and for rotating operations”
(column 1, lines 18 and 19; emphasis added). To modify the Moeller device in
accordance with the examiner’s instructions would eliminate a key feature of the
invention, which in our view would operate as a disincentive for one of ordinary skill in
the art to make the proposed modification. The mere fact that the prior art structure
could be modified does not make such a modification obvious unless the prior art
suggests the desirability of doing so. In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). We fail to perceive any teaching, suggestion or incentive
which would have led one of ordinary skill in the art to remove from the Moeller device
the flats that enable rotating operation, other than the hindsight afforded one who first
viewed the appellant’s disclosure, which cannot form the basis for a rejection under
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