Ex Parte Wang - Page 4




             Appeal No. 2004-0390                                                               Page 4                
             Application No. 09/727,397                                                                               


             1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993).  A prima facie case of obviousness is                       
             established by presenting evidence that would have led one of ordinary skill in the art to               
             combine the relevant teachings of the references to arrive at the claimed invention.                     
             See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re                      
             Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).  The mere fact that                         
             the prior art could be modified in the manner suggested by the examiner does not make                    
             such a modification obvious unless the prior art suggested the desirability of the                       
             modification.  See In re Gordon, 773 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.                       
             1984).                                                                                                   


                    Claim 1, the only independent claim on appeal, reads as follows:                                  
                           A wrench comprising:                                                                       
                           a box end comprising a compartment and a cavity;                                           
                           a ratchet wheel rotatably mounted in the compartment, an inner periphery                   
                    defining the compartment of the box end allowing universal movement of the                        
                    ratchet wheel, the ratchet wheel including a plurality of teeth on an outer                       
                    periphery thereof;                                                                                
                           a pawl mounted in the cavity for engaging with the ratchet wheel; and                      
                           means for biasing the pawl toward the ratchet wheel and thus engaging                      
                    with the teeth of the ratchet wheel;                                                              
                           the ratchet wheel being completely received in the compartment of the                      
                    box end when a central axis of the ratchet wheel is coincident with a central axis                
                    of the compartment of the box end.                                                                












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