Appeal No. 2004-1223 Page 9
Application No. 09/842,142
Obviousness Determination
With regard to this difference, the examiner determined (answer, p. 4) that it
would have been obvious to one of ordinary skill in the art at the time the invention was
made to have modified Suto "to include the shock absorber being used for absorbing a
shock transmitted through steering rods having the shock absorber being a coil spring
member formed by winding up a part of the steering rods in a coil form, and the steering
rods are made of metal wire as taught by Liebert. To do so would be able to have a
smooth travel with a decreased in road vibration."
The appellant argues throughout both briefs that there is no motivation in the
applied prior art to have modified Suto to arrive at the claimed subject matter. We
agree.
A critical step in analyzing the patentability of claims pursuant to 35 U.S.C.
§ 103 is casting the mind back to the time of invention, to consider the thinking of one
of ordinary skill in the art, guided only by the prior art references and the then-accepted
wisdom in the field. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617
(Fed. Cir. 1999). Close adherence to this methodology is especially important in cases
where the very ease with which the invention can be understood may prompt one "to
fall victim to the insidious effect of a hindsight syndrome wherein that which only the
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