Appeal No. 2001-0645
Application No. 09/055,472
Appellants argue, first, that McGinley constitutes
nonanalogous art, not being either from appellants’ field of
endeavor or pertinent to the problem with which appellants are
concerned. In the view we take in this case, even if we assume
that McGinley is analogous art, the obviousness rejection is not
well founded.
In the present case, the reference evidence relied upon by
the examiner does not establish which properties are desirable in
the design of a prosthesis for implantation in a mammalian body,
nor that gel materials comprising glucomannan, admittedly known1,
are recognized to have such desirable properties. In this
regard, the examiner’s position that Perry’s use of the term
“gel” in describing the filler material teaches that any material
having the physical characteristic of a gel would be suitable for
Perry’s purpose is not sufficient. In a nutshell, the examiner
proposes that it would have been obvious to try each of numerous
possible choices of materials having the characteristics of a gel
until one possibly arrived at a successful result where the prior
art gives no indication of which parameters are critical and no
1 See, for example, the discussion on pages 3-5 of the specification of
the present application.
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