Appeal No. 95-0423
Application 07/696,859
remainder of the body. Although the examiner concedes that
Ritch does not disclose these features, he nevertheless
concludes that they would have been obvious to one of ordinary
skill in the art “as a choice of geometrical design” (answer,
page 5).
In short, Ritch does not provide the factual basis
necessary to support this conclusion of obviousness. The
tapered portions are stated to facilitate entry of the shunt
into the hole formed in the membrane (specification, page 15,
lines 8-10) and the angled construction is stated to allow the
shunt to conform to the curvature of the globe of the eye
(specification, page 11, lines 35-37). Accordingly, these
features of appellant’s invention may not be dismissed as
obvious design parameters without supporting evidence.
Compare In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA
1975). Thus, based on the prior art relied upon by the
examiner, we cannot sustain the rejection of claims 17-19, 25,
27 and 31 as being unpatentable over Ritch.
We shall sustain the rejection of claim 43 as being
anticipated by Ritch.
The only limitation of method claim 43 argued by
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