Appeal No. 2002-0947 Page 5
Application No. 09/518,835
choice” (answer, page 3) is equally unsound, as the examiner has adduced no
evidence showing that one of ordinary skill in the art would have considered the
provision of equally-sized holes to be suitable or desirable in Yang’s wire-stripping
section.3 On the contrary, in light of the teachings of Yang in the background of the
invention, one of ordinary skill in the art would have been instructed by Yang to provide
openings of different dimensions to permit stripping of wires of different sizes. From our
perspective, the only suggestion for providing duplicate stripping openings of equal size
in the wire-stripping section of Yang as proposed by the examiner is found in the luxury
of hindsight accorded one who first viewed appellant’s disclosure, with its teaching of
the desirability of simultaneously stripping the two 12 gauge wires of a sheathed cable,
for example. This, of course, is not a proper basis for a rejection. See In re Fritch, 972
F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
For the foregoing reasons, we conclude that the evidence relied upon by the
examiner is insufficient to establish that the differences between the subject matter of
claims 1, 13 and 15 and Yang are such that the claimed subject matter would have
been obvious within the meaning of 35 U.S.C. § 103. Accordingly, we shall not sustain
the examiner’s rejection of these claims or, it follows, of dependent claims 2-12 and 14.
3 Even when obviousness is based on a single prior art reference, there must be a showing of a
suggestion or motivation to modify the teachings of that reference. See In re Kotzab, 217 F.3d 1365,
1370, 55 USPQ2d 1313, 1316-17 (Fed. Cir. 2000).
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