Appeal No. 2005-0340 9
Application No. 10/098,105
access and retaining panel (119) of Sands “may be secured as shown by Ho.” While in
retrospect, it would appear that one skilled in the art could have used a latchable panel
in place of the access and retaining panel (119) of Sands that is screwed or bolted in
place to prevent inadvertent shifting of the circuit board (130), we observe that, like
appellants, we find no fair teaching, suggestion or motivation in the references relied
upon by the examiner for making such a modification. 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 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,
23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). In our opinion, the patents to Sands and
Ho provide no suggestion regarding the desirability of such a modification.
From our perspective, the examiner has relied upon impermissible hindsight and
used appellants’ claimed invention as an instruction manual or "template" in an attempt
to piece together disparate teachings of the prior art so that the claimed invention is
rendered obvious. This approach to a determination of obviousness is improper and
cannot be sanctioned by this Board. See In re Gorman, 933 F.2d 982, 987,
18 USPQ2d 1885, 1888 (Fed. Cir. 1991) and Interconnect Planning Corp. v. Feil,
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