Appeal No. 2001-0645
Application No. 09/055,472
direction as to which of many possible choices is likely to be
successful. At best, in view of Perry’s disclosure one skilled
in the art might find it obvious to try various combinations of
compounds for fabricating the implantable prosthesis of Perry.
However, this not the standard of 35 U.S.C. § 103. See In re
Goodwin, 576 F.2d 375, 377, 198 USPQ 1, 3 (CCPA 1978); In re
Antonie, 559 F.2d 618, 620, 195 USPQ 6, 8 (CCPA 1977); In re
Tomlinson, 363 F.2d 928, 931, 150 USPQ 623, 626 (CCPA 1966).
In addition, the examiner’s position (answer, page 4) to the
effect that the rejection is sound because appellants have not
established the criticality of using the particular gelling agent
called for in the claims in an implant is noted. The examiner’s
position in this regard is inappropriate because criticality is
not a requirement of patentability. See W. L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1556, 220 USPQ 303, 315 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
In the fact situation before us, when we set aside in our
minds that which appellants teach us in the present application,
we conclude that the applied Perry and McGinley references, by
themselves, simply would not have suggested the proposed
modification of the implantable prosthesis of Perry to include a
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