Appeal No. 2003-0541 Page 6
Application No. 09/645,845
interior configurations (columns 5 and 6). Rogers does not utilize the driver adaptor as
a socket for accommodating a workpiece other than the oil filter wrench, which engages
the workpiece. The driver adaptor is used only as a means for driving a plurality of oil
filter wrenches of different sizes and configurations, which are selected to
accommodate the oil filter being worked upon.
The examiner has not explained how the Bayouth wrench would be modified by
the teachings of Rogers in order to meet the terms of claim 13, nor has any comment
been made regarding the limitations directed to the sizes of the complementary parts
engagable by the first and second sockets. 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. See In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984). We fail to perceive any teaching, suggestion or incentive
in either Bayouth or Rogers which would have led one of ordinary skill in the art to
modify the Bayouth cylindrical device in such a manner as to meet the terms of the
claim, especially when considering that the first ends of the “first sockets” in both of the
references are designed only to accommodate the configuration of the “second
sockets” and not of the second sockets in addition to work pieces having the limitations
recited in the claim.
It therefore is our conclusion that the combined teachings of Bayouth and
Rogers fail to establish a prima facie case of obviousness with regard to the subject
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