Appeal No. 2000-1759
Application No. 08/748,637
forth why Kononov's balloon expansion step would have been
incompatible with Choudhury's method, the examiner stands silent,
having provided no response to the declaration evidence.
Moreover, like appellant, we find that the examiner's
specific rationale for the combination, i.e., to obtain a "highly
controllable expansion force generated by the inflatable
portion," is without foundation in the references themselves and
appears to be based on pure speculation and conjecture on the
examiner’s part. Again, the examiner has provided no cogent
response to appellant's arguments and evidence to the effect that
substituting the inflatable expansion system of Kononov in the
system and method in Choudhury would actually have the
undesirable effect of sacrificing control.
In the final analysis, we agree with appellant that the
examiner has failed to establish a prima facie case of
obviousness. Since the combined teachings of the applied
references to Choudhury and Kononov would not have rendered the
subject matter of appellant's claims on appeal obvious to one of
ordinary skill in the art at the time appellant's invention was
made, we will not sustain the examiner's rejection of claims 39
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