Appeal No. 2004-0247 Page 6
Application No. 09/899,664
calf support is not adjustable around a vertical axis but is limited to pivotal movement
fore and aft. Notably, Lehner fails explicitly to disclose the use of screws in attaching
these components together.
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 reference which would have led one of
ordinary skill in the art to discard the fixed mounting of the heel loop of Lehner in favor
of an adjustable mounting and the single axis adjustability of the calf support in favor of
a multiple axis system, much less that this be accomplished by the use of the screw and
shared nut arrangement required by claim 1. From our perspective, the only suggestion
for the modification proposed by the examiner is found in the luxury of the hindsight
afforded one who first viewed the appellant’s disclosure. This, of course, is not the
proper basis for a rejection under 35 U.S.C. § 103(a). In re Fritch, 972 F.2d 1260, 1266,
23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
We therefore conclude that the combined teachings of Lehner and Swanson fail
to establish a prima facie case of obviousness with regard to the subject matter recited
in claim 1 or, it follows, of dependent claims 2 and 4.
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