Ex Parte Westlund et al - Page 8

                Appeal  2007-0811                                                                              
                Application 10/128,997                                                                         

                                                                                                              
                Id. at 1740, 82 USPQ2d at 1396.  The operative question in this “functional                    
                approach” is thus “whether the improvement is more than the predictable use                    
                of prior art elements according to their established functions.”  Id.                          
                                                 ANALYSIS                                                      
                      Our findings with regards to the scope and content of the prior art are                  
                outlined above.  Warman differs from the claimed subject matter in possibly                    
                not showing a flexible tapered portion extending from the preformed biased                     
                portion to the distal end of the lead.   Hine discloses such a flexible tapered                
                portion.  We agree with the Examiner that it would have been obvious at the                    
                time Appellants’ invention was made to taper and render flexible, the distal                   
                portion of Warman’s lead body if, indeed, Warman’s body is not tapered and                     
                flexible.  Hine teaches one of ordinary skill to do so to improve the                          
                maneuverability in the cardiac vein. This is the simple substitution of one                    
                known element for another to obtain predictable results.                                       
                      Appellants argue that the combination of Warman and Hine does not                        
                include every element of the claim and that there is no suggestion or                          
                motivation to combine these references.  We certainly disagree.  As we have                    
                outlined in our findings, each and every element of the claim is found in                      
                Warman with the possible exception of the tapered tip.  Appellants further                     
                argue that Warman teaches away in that Warman discloses a thin lead body                       
                whereas Hine creates maneuverability by tapering only the end of the body.                     
                In our view, the teaching of Hine is clear.  Whatever the diameter of the                      
                lead, when maneuvering in the tortuous cardiac vein, it is ideal to provide a                  
                molded, tapered nose to improve maneuverability and to prevent damage to                       


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