Ex parte LAWRENCE et al. - Page 10




          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).                        

















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