Appeal No. 2005-2182
Application No. 10/417,458 Page 5
agree with appellants that the examiner as not established how
the disparate teachings of Chae that are directed to a vehicle
pedal device serve to particularly suggest a modification to the
bicycle clipless pedal adapter of Nagano.
It is well settled that the mere fact that prior art may be
modified to reflect features of the claimed invention does not
make the modification obvious unless the desirability of such
modification is suggested by the prior art. Our reviewing court
has repeatedly cautioned against employing hindsight by using the
appellant’s disclosure as a blueprint to reconstruct the claimed
invention from the isolated teachings of the prior art. See,
e.g., Grain Processing Corp. v. American Maize-Products Co.,
840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988). From
our perspective, the examiner’s proposed combination of Nagano
and Chae appears to be premised on impermissible hindsight
reasoning. Moreover, the examiner has not detailed how Paris,
which is directed to a motorcycle foot peg, as applied in the
obviousness rejection of dependent claims 6 and 16 would make up
for the deficiencies in the teachings of Nagano discussed above.1
1 The examiner does not offer an explanation as to how Paris
makes up for the acknowledged lack of a teaching of the claimed
pedal adapter first and second portions in Nagano. Nor des the
examiner employ Chae in the separate obviousness rejection of
dependent claims 6 and 16 notwithstanding that Chae was employed
in the obviousness rejection of the independent claims from which
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