Appeal No. 2005-1173 Page 10
Application No. 10/134,793
wrench, a ratchet wrench). The box spanner of Bogni is a tool specially designed for a
specific purpose. As such, there is no reason for an artisan to have modified the box
spanner of Bogni to become a tool incapable of being used for that specific purpose. In
our view, the only suggestion for modifying Bogni's box spanner in the manner
proposed by the examiner to arrive at the claimed subject matter stems from hindsight
knowledge derived from the appellant's own disclosure. The use of such hindsight
knowledge to support an obviousness rejection under 35 U.S.C. § 103 is, of course,
impermissible. See, for example, W. L. Gore and Assocs., Inc. v. Garlock, Inc., 721
F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
For the reasons set forth above, the decision of the examiner to reject claims 1 to
20 under 35 U.S.C. § 103 is reversed.
REMAND
We remand this application to the examiner to consider if any of claims 1 to 20
are unpatentable under 35 U.S.C. § 103 based on the teachings of either Morrissey or
White taken in view of Bogni. That is, would it have been obvious at the time the
invention was made to a person having ordinary skill in the art in view of the teachings
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