Appeal No. 96-4138
Application 08/392,609
the manner as set forth by Tanabe et al. where the
counterbore is within the catheter and the tip includes
the mating male member. Further, it is quite clear
form [sic, from] the Macaulay et al. reference that the
diameter of the counterbore is such that upon placing
it within the catheter end, the inner tube and support
structure of the catheter would effectively be removed.
[final office action, Paper no. 13, pages 2-3]
We have carefully considered the issues raised in this
appeal together with the examiner’s remarks and appellant’s
arguments. As a result, we conclude that the rejection of the
appealed claims cannot be sustained.
In the present case, the examiner seems to conclude that it
would have been obvious to switch the placement of the
counterbore and the mating male portion in Macaulay’s lap joint
simply because it is known to provide the counterbore in a
catheter body and the mating male portion on a catheter tip
portion as disclosed in Tanabe. However, the question presented
under 35 U.S.C. § 103 is not whether such an arrangement is
known.
Instead, the question is whether there is some reason or
motivation in the prior art that would have led one of ordinary
skill in the art to make the proposed modification in Macaulay’s
catheter assembly. See In re Lalu, 747 F.2d 703, 705, 223 USPQ
1257, 1258 (Fed. Cir. 1984) (The prior art must provide one of
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