Appeal No. 97-1030
Application 08/368,261
position is that this limitation “does not patentably distinguish
over the prior art of record” (Answer, page 3). We do not agree.
From our perspective, the size and shape requirement constitutes
a structural limitation of the claim which must be present in
order for a reference to be anticipatory. The size and shape of
the inlet to tube 78 cannot be determined from the Kensey
disclosure, much less that it corresponds to that of a “standard”
IV catheter hub.
Therefore, Kensey does not anticipate the subject matter of
claims 1, 4 and 7.
The Rejections Under 35 U.S.C. § 103
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). However, the mere fact that the prior art structure
could be modified does not make such a modification obvious
unless the prior art suggests the desirability of doing so. See
In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984).
Claims 5 and 8 stand rejected as being obvious in view of
the teachings of Kensey and Schwartz. As we stated above, Kensey
fails to teach that the nozzle on the cap be of such size and
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