Ex Parte Ferry et al - Page 12

                Appeal 2007-2812                                                                             
                Application 10/337,236                                                                       
                Anderson in view of Engelson                                                                 
                      Claims 4-5 and 17 stand rejected under 35 U.S.C. § 103(a) over                         
                Anderson in view of Engelson (Answer 3).                                                     
                      The Examiner contends:                                                                 
                      Anderson discloses a magnetically navigable guidewire 23, as                           
                      described in claims 3 or 16 above, that teaches all the                                
                      limitations of the claims except the radiopaque hollow cylinder                        
                      tip is neither made of gold, gold alloys, platinum, or platinum                        
                      alloys. Engelson et al. teach a radiopaque medical device                              
                      wherein the tip is made of a radiopaque element from a list                            
                      consisting of gold and platinum. It would have obvious at the                          
                      time Applicant’s invention was made to provide a magnetically                          
                      navigable guidewire similar to that of Anderson with a                                 
                      radiopaque tip similar to that of Engelson et al. in order to                          
                      permit monitoring of its tip location (see Engelson et al.,                            
                      column 8/lines 25-30).                                                                 
                (Final Office Action 6.)                                                                     
                      It is the Examiner’s burden to establish prima facie obviousness. See,                 
                e.g., In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.                    
                1993).  Obviousness requires a teaching that all elements of the claimed                     
                invention are found in the prior art and “a reason that would have prompted                  
                a person of ordinary skill in the relevant field to combine the elements in the              
                way the claimed new invention does” KSR Int’l Co. v. Teleflex Inc., 127 S.                   
                Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).   Here, the Examiner has                        
                provided evidence of all elements of the claimed invention and a reason that                 
                would have prompted a person of skill in the art to combine them to achieve                  
                the claimed invention.  Appellants do not identify any defect in the                         
                Examiner’s reasoning and we find none.  Consequently, we affirm the                          
                rejection of claim 4.  Claims 5 and 17 fall with claim 4 because they were                   
                not separately argued.                                                                       

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