Appeal No. 96-4107
Application No. 08/368,262
and shape of a syringe tip such that it can friction fit
inside the hub of an IV catheter, as is required in both of
these claims, nor does such appear to be inherent. The Thomas
reference suffers from the same shortcoming.
Therefore, neither reference anticipates these two claims
and this rejection is not sustained.
The Rejections Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings
of the prior art would have suggested to one of ordinary skill
in the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). However, the mere fact that the prior
art structure could be modified does not make such a
modification obvious unless the prior art suggests the
desirability of doing so. See In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The initial burden
of establishing a basis for denying patentability to a claimed
invention rests with the examiner. See In re Piasecki, 745
F.2d 1468, 223 USPQ 785 (Fed. Cir. 1984).
Independent claim 4 and dependent claim 5 have been
rejected as being unpatentable over Harvey in view of
10
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007