Ex Parte Lovett et al - Page 13

           Appeal 2007-1451                                                                         
           Application 09/970,146                                                                   

       1       On the other hand, as Lieber suggests the desirability of placing an electrode       
       2   within a flexible device for the purpose of cardiac measurement (FF09), Maseda               
       3   describes the desirability of making a flexible device that travels within a body,       
       4   such as Lieber’s, more flexible and steerable (FF 08).                                   
       5       The Appellants contend that applying Maseda’s teachings to Lieber would              
       6   impermissibly change Lieber’s principle of operation, citing In re Ratti, 270 F.2d       
       7   810, 123 USPQ 349 (CCPA 1959).  While Ratti held that a combination of                   
       8   references that would require a substantial reconstruction and redesign of the           
       9   elements shown the prior art as well as a change in the basic principles under           
      10   which the prior art was designed to operate is not a proper ground for an                
      11   obviousness rejection, 270 F.2d at 813, 123 USPQ at 352, what Ratti was referring        
      12   to was reconstruction and redesign of how all the elements interrelate in a manner       
      13   relying on operational principles unforeseeable to a person of ordinary skill.           
      14       In Ratti, claims were directed to an oil seal comprising a bore engaging portion     
      15   with outwardly biased resilient spring fingers inserted in a resilient sealing           
      16   member. The primary reference relied upon in a rejection based on a combination          
      17   of references disclosed an oil seal wherein the bore engaging portion was                
      18   reinforced by a cylindrical sheet metal casing. Its seal was incompressible and the      
      19   device required rigidity for operation, whereas the claimed invention required           
      20   resiliency.                                                                              
      21       But Lieber’s electrode coupled with Maseda’s device body does not do such            
      22   violence to the operating principles of Lieber.  Modifications by substitution, even     
      23   if they omit the subject matter portion which a prior art patentee apparently            
      24   regarded as his contribution to the art along with such advantages as it might           
      25                                                                                            
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