Appeal No. 2000-2047 Page 9
Application No. 09/014,759
therefore is “desirable,” and we find no such assertion on our own. This being the case, it
is our opinion that the only suggestion for selecting the particular tip disclosed in Kim’s
Figure 10 over any other configuration is found in the hindsight afforded one who first
viewed the appellants’ disclosure. This, of course, is not a proper basis for a rejection
under Section 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir.
1992).
It therefore is our conclusion that the teachings of Makower in view of Kim do not
establish a prima facie case of obviousness with regard to the subject matter recited in
independent claim 13 and dependent claims 14-22, and we will not sustain this rejection.
We reach the same conclusion, for the same reasons, with regard to independent method
claims 24 and 26.
Considering Kim in view of Makower leads us to the same result. Here, it is the
examiner’s position that it would have been obvious to add a guide wire to the Kim
arrangement “to effectively guide” the device within the vessel, in view of Makower’s use of
the same. Since an “essential feature” of the Kim puncturing headpiece is to be
expandable and contractible (column 14, line 30 et seq.), we agree with the appellants that
one of ordinary skill in the art would not have been motivated to install a guide wire in the
center in view of the presence of mechanical (Figure 14) and fluid (Figure 15) means for
causing expansion and contraction located along the centerline, for that would appear to
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007