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 NextLast modified: November 3, 2007