Appeal No. 1998-1045
Application 08/482,674
to the catheter wall. It is well settled that an examiner
cannot establish obviousness by locating references which
describe various aspects of an applicant's invention without
also providing evidence of the motivating force which would
impel one skilled in the art to do what applicant has done.
See Ex parte Levengood, 28 USPQ2d 1300, 1302, (BPAI 1993).
Here, we find no persuasive evidence of such a motivating
force.
Since the examiner has not established a prima facie case
of obviousness with regard to the subject matter of
independent claim 38, the rejection of claim 38 and of claims
39 and 44 through 46, which depend from claim 38, under 35
U.S.C. § 103(a) over Gould in view of Jackowski will not be
sustained.
We have also reviewed the patent to Narula, applied along
with Gould and Jackowski against dependent claim 40, and the
patent to Takahashi, applied along with Gould and Jackowski
against dependent claims 41 through 43, but find nothing in
those references which would have made it obvious at the time
the invention was made to a person having ordinary skill in
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