Appeal No. 2000-1934 Page 10
Application No. 08/779,420
the particular properties recited in claim 10 are inherent in
the PVC material of Muto's catheter. While it is probably
true that a catheter could have been made from a known PVC
material having the recited properties, Muto provides no
suggestion to do so. The mere fact that the prior art could
be so modified would not have made the modification obvious
unless the prior art suggested the desirability of the
modification. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d
1430, 1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984).
For the foregoing reasons, we conclude that Muto is not
sufficient to establish that the subject matter of claim 10,
or claim 11 which depends from claim 10, would have been
obvious to one skilled in the art at the time of appellants'
invention. Thus, we will not sustain rejection (3).
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007