Ex Parte Lovett et al - Page 14

           Appeal 2007-1451                                                                         
           Application 09/970,146                                                                   

       1   provide, where the modified apparatus is obvious in view of the prior art and where      
       2   the retained portion of the subject matter will operate on the same principles as        
       3   before, “are not authority for holding a rejection improper under such                   
       4   circumstances.”  In re Umbarger, 407 F.2d 425, 430-31, 160 USPQ 734, 738                 
       5   (CCPA 1959), distinguishing Ratti.  Thus, modifying Lieber by substituting a             
       6   rheometric device body for the catheter still operates on the principle of Maseda,       
       7   and the combination remains flexible and able to be guided for performing medical        
       8   procedures, as needed in Lieber, Maseda, and the claimed invention.                      
       9       Moreover, Lieber uses a balloon catheter for navigation in the heart (FF 12).        
      10   Lieber’s invention only goes to obviating the need for isolation of the leads to its     
      11   electrode (FF 09).  Maseda would provide an addition to, not a change to, Lieber’s       
      12   method of navigation.  Further, Maseda specifically describes its application            
      13   toward balloon catheters, such as Lieber’s (FF 08).                                      
      14       The Appellants contend there is no motivation to combine Maseda with Lieber,         
      15   but Maseda describes the advantages of its material in a device such as that in          
      16   Lieber (FF 08).  As to the claim as a whole, we note that applying Maseda’s device       
      17   housing to Lieber’s electrode within such a device, provides the advantages taught       
      18   by Maseda toward a device that must be navigated within a body, where the device         
      19   contains the electrode whose need is taught by Lieber.                                   
      20       Thus, the Examiner has met the requirements of Graham v. Deere in finding            
      21   that all of the claimed subject matter is described by Maseda and Lieber and that        
      22   one of ordinary skill would have been led to combine those references to achieve         
      23   the claimed subject matter.                                                              




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