Ex parte AVITALL - Page 11




          Appeal No. 1998-1045                                                        
          Application 08/482,674                                                      


          to the catheter wall.  It is well settled that an examiner                  
          cannot establish obviousness by locating references which                   
          describe various aspects of an applicant's invention without                
          also providing evidence of the motivating force which would                 
          impel one skilled in the art to do what applicant has done.                 
          See Ex parte Levengood, 28 USPQ2d 1300, 1302, (BPAI 1993).                  
          Here, we find no persuasive evidence of such a motivating                   
          force.                                                                      
               Since the examiner has not established a prima facie case              
          of obviousness with regard to the subject matter of                         
          independent claim 38, the rejection of claim 38 and of claims               
          39 and 44 through 46, which depend from claim 38, under 35                  
          U.S.C.  103(a) over Gould in view of Jackowski will not be                 
          sustained.                                                                  
               We have also reviewed the patent to Narula, applied along              
          with Gould and Jackowski against dependent claim 40, and the                
          patent to Takahashi, applied along with Gould and Jackowski                 
          against dependent claims 41 through 43, but find nothing in                 
          those references which would have made it obvious at the time               
          the invention was made to a person having ordinary skill in                 


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