Appeal No. 1997-3676
Application 08/237,221
the tear ducts,” and to apply a laser through the illuminating
fiber to the tissue of interest, the laser being of the type
required by the claim pursuant to the teachings of
L’Esperance, Wolbarsht and Hussein (Answer, page 4).
It is axiomatic that 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, for example, In re Gordon, 733
F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). In the
present case, we fail to perceive any teaching, suggestion or
incentive which would have led one of ordinary skill in the
art to combine Herrick and Ector in the manner proposed by the
examiner. In this regard, Herrick teaches opening and closing
only the punctum, that is, the entrance to the tear ducts, by
means of laser energy, and does not disclose or teach that the
laser be inserted into the tear ducts for any reason, much
less for the purpose of operating upon occlusions present
therein. Thus, suggestion to proceed through the tear ducts
for any reason is absent from Herrick, as is suggestion that
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