Appeal No. 2000-0087 Page 5
Application No. 08/592,006
Even if one were to accept, arguendo, the examiner’s position that one of ordinary
skill in the art would have found it obvious, from the above paragraph of Sagie when taken
with the mention of coagulation elsewhere in the reference, to close the fallopian tubes by
means of laser coagulation, and that the laser be introduced through the patient’s uterus, a
fatal defect still exists in the rejection. This resides in the requirement in all three of the
independent claims that the coagulation should be performed in tissue “adjacent to” the
fallopian tubes, which clearly is not explicitly taught by the reference and, in our view, would
not have been suggested by the reference.
This being so, the teachings of Sagie fail to establish a prima facie case of
obviousness with regard to the subject matter of the three independent claims and, it
1
follows, the rejection of all of the claims cannot be sustained.
CONCLUSION
The rejection is not sustained.
The decision of the examiner is REVERSED.
1The initial burden of establishing a basis for denying patentability to a claimed
invention rests upon the examiner. See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ
785, 788 (Fed. Cir. 1984). A prima facie case of obviousness is established when the
teachings of the prior art itself would appear to have suggested the claimed subject matter
to one of ordinary skill in the art. See In re Bell, 991 F.2d 781, 782,
26 USPQ2d 1529, 1531 (Fed. Cir. 1993).
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