Appeal No. 2000-2047 Page 5
Application No. 09/014,759
there any reason to conclude that this inherently would occur, or that the probe and/or the
sheath are even capable of being rotated.
In the embodiment shown in Makower’s Figure 17, a guide wire 51 is advanced
through the wall of the tubular body organ, followed by a generally cone-shaped dilating tip
170 that has a rearward-oriented annular blade on its proximal end. No details are
provided as to how the wall initially is pierced. Once through the tissue, the dilating tip is
pulled back to cut the tissue between the knife and a tissue cutting cannula assembly that
still resides in the inside of the tubular body organ. See column 9, line 14 et seq. There is
no explicit statement that the dilating tip is rotated during the cutting operation, nor does it
appear that it inherently does so or even is capable of being rotated. Moreover, the cutting
edge is not “advanced” through the tissue in the sense that it clearly is not the first element
to pierce the tissue.
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413,
425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972, 973
(Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some
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