Appeal No. 2005-1078
Application 09/681,303
We affirm this ground of rejection of claim 1 and the other claims here rejected under
§ 103(a) on the same basis that we affirmed the ground of rejection of these same claims under
§ 102(b) over Liprie ‘781 alone because it is well settled that “anticipation is the ultimate of
obviousness.” See In re Baxter Travenol Labs., 952 F.2d 388, 392, 21 USPQ2d 1281, 1284-85
(Fed Cir. 1991), citing In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
Furthermore, appellant submits that the examiner’s finding that Narciso would have
taught the equivalence of Nitinol®, stainless steel and tantalum as “metals which have the tensile
strength and memory to deflect and return to its original position” for use as deflecting wire 23
fir SLID catheter 10 (answer, page 6; Narciso, e.g., col. 3, ll. 32-39, FIGs. 1 and 2a-c, cols. 2-3),
is “a broad generalization [which] is inappropriate” as the “focus should be on whether the
metals are equivalent for the particular constructions taught by” claim 1 (brief, page 12). In this
respect, appellant contends that
[i]t is well known in the industry that stainless steel source wire tends to fail not only
through repeated traversal of the torturous regions of the body, but may also tend to
kink or distort during single applications in particularly tortuous regions. By contrast,
the shape-memory characteristics of the nickel and titanium alloy housing tube, and
materials exhibiting little or no memory when bent, more generally, of the present
claims lends a resiliency to the wire, permitting the wire to repeatedly and reliably
traverse the torturous regions of the body without risk of such distortion and kinking.
[Brief, page 12.]
We find no support in the record for appellant’s allegations that certain tendencies of
stainless steel are “well known in the industry” and that “shape-memory” have superior
properties thereto in the context of the claimed invention, and thus, such arguments are entitled
to little, if any, weight. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir.
1984); In re Payne, 606 F.2d 303, 315, 203 USPQ 245, 256 (CCPA 1979); In re Lindner, 457
F.2d 506, 508, 173 USPQ 356, 358 (CCPA 1972). See In re Lindner, 457 F.2d 506, 508, 173
USPQ 356, 358 (CCPA 1972) (“This court has said . . . that mere lawyers’ arguments
unsupported by factual evidence are insufficient to establish unexpected results. [Citations
omitted.]”). Indeed, we interpreted appealed claim 1 above to encompass any metal that is
capable of effective flexibility under the conditions of use for the claimed flexible source wire
which, of course, includes operating room and patient body temperatures, and at any point in
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