Appeal No. 2002-0311 Page 8
Application No. 09/030,241
would be applicable to locating a probe in the respiratory system, for in an obviousness
assessment skill is presumed on the part of the artisan, rather than the lack thereof. In
re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985). In the final
analysis, the only argued difference between the method recited in claim 1 to locate a
catheter in the respiratory system and that used by Ben-Haim to locate a catheter in the
heart is the organ in which the method is practiced.
Claim 8 adds to claim 1 through claims 7 and 6 the requirement that the selected
reference point which occurs in each cycle be established by “monitoring the position of
said reference point over a plurality of cycles and finding an extreme position of said
reference point which recurs in each cycle based on such monitoring.” No definition of
“extreme position” has been provided, but from the example given on page 7 of the
specification (the minimum inspiration state) it would appear that the “extreme
positions” would be the maximum and the minimum states in the respiratory cycle. No
advantage or criticality for selecting this position is set forth and on that basis the
examiner has taken the position that to select an “extreme position” in the respiratory
cycle as the reference point would have been within the purview of the skill of one of
ordinary skill in the art.
We are persuaded by the appellant’s arguments, however, that the examiner’s
position is not tenable. In particular, we agree with the appellant that there is no basis
to support the conclusion that the method recited in claim 8 for finding the extreme
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