Appeal No. 2001-2516 Page 4
Application No. 09/286,047
if any shape change occurs, it occurs because of the action of the jacket on the hydrogel
core 22.
We agree with the examiner that the hydrogel core 22 in Ray does have different
shapes in the hydrated and dehydrated conditions. Ray discloses (col. 9, lines to 17 to
20) that once hydrated the oxal spinal disc nucleus will be more circular. In our view this
clearly teaches that the disc nucleus has a different shape in the hydrated state than in
the dehydrated state.
In regard to the second component of appellants’ argument, the appellants’
specification discloses that the desired dehydrated and hydrated shape is different from
the dehydrated shape (specification, p. 14). As such, we interpret the term “configure”
recited in claim 1 to mean that the core is formed or manufactured to have a shape in
the hydrated state whcih is different.
Ray teaches that the jacket forces the hydrogel core to become more circular (col.
9, lines 11 to 13).
We turn next to the examiner’s rejection of claims 4, 12 and 13 to 18 under 35
U.S.C. § 103 as being unpatentable over Ray. We initially note that the test for
obviousness is what the combined teachings of the references would have suggested to
one of ordinary skill in the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA
1981). Moreover, in evaluating such references it is proper to take into account not only
the specific teachings of the references but also the inferences which one skilled in the
art would reasonably be expected to draw therefrom. In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
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