Appeal No. 2000-2047 Page 6
Application No. 09/014,759
teaching, suggestion or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and not from the appellant's disclosure.
See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d
1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The mere fact that the prior art structure could be modified does not make such a
modification obvious unless the prior art suggests the desirability of doing so. See In re
Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
We fail to perceive any teaching, suggestion or incentive which would have led one
of ordinary skill in the art to modify the Figure 2 embodiment of Makower by replacing the
piercing tip of the probe with the dilating tip and rearward-facing blade of Figure 17. In
particular, we do not agree with the examiner that one of ordinary skill in the art would have
done so in order to provide a larger opening though the tubular body organ structure; from
our perspective, the artisan would have been motivated by the teachings of Makower’s
Figure 2 embodiment to simply use a larger piercing tip on the end of the guide wire.
Moreover, even if it were considered, arguendo, that suggestion to make the modification
proposed by the examiner exists, the resulting structure would not be adapted to advance
through the tubular body by rotation of the cutter, which is required by the claim. In this
regard, the examiner’s position that it is “well known” to rotate a tissue cutting blade “to
provide good cutting action” not only is merely an opinion unsupported by evidence, but
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