Ex Parte Malackowski et al - Page 15

                Appeal 2006-1914                                                                               
                Application 09/764,609                                                                         

           1    Court’s engagement with the question of obviousness, our cases have set                        
           2    forth an expansive and flexible approach ….”  KSR at 11.  The Court                            
           3    emphasized that “the principles laid down in Graham reaffirmed the                             
           4    ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR at 11 (citing                            
           5    Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)).                             
           7                                     ANALYSIS                                                      
           8          We begin with the rejection of the claims under 35 U.S.C.  103(a) as                    
           9    being unpatentable over Chader in view of well known prior art.  We turn                       
          10    first to claims 1 and 29.  The Examiner proposes to modify the tethered                        
          11    instrument of Chader with a wireless instrument based upon the general                         
          12    concept that wireless transmission is old and well known in the prior art.                     
          13    The Examiner opines that since an artisan is limited to wired or wireless                      
          14    transmission of signals, the selection of either one would have been obvious                   
          15    to an artisan as an artisan would have been motivated by the inherent                          
          16    desirable features of using wireless transmission over wired transmission.                     
          17    (Answer 4).   Although the Examiner's position has been clearly articulated,                   
          18    the Examiner does not provide evidence that would have suggested the use                       
          19    of a wireless system for a smart instrument used in a surgery system.                          
          20    Althought, we find from fact 2 that "[t]ypically, the surgical instruments are                 
          21    either tethered to the computer system or are wireless,"  the Examiner has                     
          22    not relied upon the admitted prior art in conjunction with Chader as the basis                 
          23    for the rejection.   We are cognizant of the court's statement  in KSR,                        
          24    "[w]hen there is a design need or market pressure to solve a problem and                       
          25    there are a finite number of identified, predictable solutions, a person of                    
          26    ordinary skill has good reason to pursue the known options within his or her                   


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