Appeal No. 97-1313
Application 07/931,695
Appellants also contend that (brief, pages 53 to 54):
Even if the structure suggested in Pollack is inherently capable of trapping a guide
wire, there is no supporting teaching in the prior art for the combination set forth by the
Examiner. Pursuant to Smithkline Diagnostics v. Helena Laboratories Corp., [859
F.2d 878, 886-87, 8 USPQ2d 1468, 1475 (Fed. Cir. 1988)] the Examiner appears to
be taking a retrospective view of inherency, which is not a substitute for some teaching
or suggestion which supports the selection and use of the various elements in the
particular claimed combination. In the present case, the selection and use of a trapping
member for trapping a guide wire is claimed, and nothing in the prior art suggests such a
combination.
The relevance of this argument to rejections (6) and (7) is not apparent, since the examiner has
rejected the claims over a single piece of prior art, and not a combination of references. The examiner
did not pick and choose or select elements from the reference, but simply pointed out the elements of
Pollack's disclosed apparatus on which the elements recited in the claims are readable. By contrast, the
portion of the Smithkline decision cited by appellants is concerned with the question of obviousness
over a combination of references, as is evident from the following (id., emphasis added):
Helena cannot pick and choose among the individual elements of assorted prior art
references to recreate the claimed invention. [citation omitted] Helena has the burden
to show some teaching or suggestion in the references to support their use in the
particular claimed combination. [citation omitted] A holding that
combination claims are invalid based merely upon finding similar elements in separate
prior art patents would be "contrary to statute and would defeat the congressional
purpose in enacting Title 35." [citation omitted]
From the above-quoted portion of appellants' brief it appears that they may not agree that the
Pollack balloon 21, 43 or 46 would inherently be capable of trapping a guide wire, but they have
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