Appeal No. 1999-0253
Application No. 08/636,206
B. The Rejection under 35 U.S.C. § 103
The examiner acknowledges that Gianturco, the secondary
reference employed by the examiner to teach the use of an
elastomeric sleeve or covering for stents, is silent as to how
the stent is fitted within the tubular preformed sleeve
(Answer, page 8). Nonetheless, the examiner concludes that
“one of ordinary skill in the art would have readily
understood that some technique was used to position the stent
of Gianturco within the preformed tubular sleeve” and thus
would have used the stent insertion technique taught by
MacGregor for deployment of a stent in a catheter (Answer,
pages 8-9, emphasis added). However, the examiner has not
identified any support in Gianturco for the finding that the
sleeve is “preformed” or any reason or suggestion for the
combination of the references as proposed.
Evidence of a suggestion, teaching, or motivation to
combine references may flow from the prior art references
themselves, the knowledge of one of ordinary skill in the art,
or from the nature of the problem to be solved. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
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