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 11Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007