Appeal No. 2004-1319
Application 09/933,329
and including a uniform outside diameter elongate body member (2)
with a nut receiving socket (3) at one end, a fluted handgrip
portion (5) adjacent the other end, and a longitudinal bore (17)
extending through the body member.
Like appellant, we find nothing in either Fuca or Rosenbaum
regarding a teaching or suggestion that would have motivated one
of ordinary skill in the art at the time appellant’s invention
was made to selectively combine the features of the two wrenches
in the particular manner posited by the examiner. In that
regard, we note that the mere fact that the prior art could be
modified in the manner urged by the examiner would not have made
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) and In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992). In this case, it is our opinion that the prior art does
not contain such a suggestion and that the examiner has
impermissibly drawn from appellant’s own teaching and fallen
victim to what our reviewing Court has called “the insidious
effect of a hindsight syndrome wherein that which only the
inventor has taught is used against its teacher.” W.L. Gore &
9
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