Appeal No. 1999-2816 Page 4
Application No. 08/064,052
The examiner finds (Answer, bridging sentence, pages 6-7) that increased
“lubricity is inherent in the use of the materials disclosed in the prior art.” In this
regard, we note that while Bird was originally applied4 in a rejection under
35 U.S.C. § 102(b) during the prosecution of this application, the rejection before
us for review is not based upon anticipation, but is instead one of obviousness
under 35 U.S.C. § 103. Therefore, to the extent that the examiner may find
“increased lubricity” inherent in Bird, we remind the examiner as set forth in In re
Spormann, 363 F.2d 444, 448, 150 USPQ 449, 452 (CCPA 1966) “[t]hat which
may be inherent is not necessarily known. Obviousness cannot be predicated
on what is unknown.”
Besides failing to mention “lubricity,” Bird differs from the claimed
invention in not teaching “a single-use disposable device in which a portion of the
surface of the device … is inserted into the body and contacts body tissue….”
While appellant’s specification does disclose, at page 12, “cuvettes” as “[t]ypical
blood contacting devices,” the limitations set forth in the claims circumscribe a
subset of the devices listed in the specification. In our opinion, a person of
ordinary skill in the art would appreciate that a cuvette would typically not be
considered a device that would be inserted into the body. In this regard, we note
that the examiner has not provided evidence to the contrary. Instead, the
examiner finds (Answer, page 5) that “Bird also suggests the use of the
phosphatidyl choline [sic] material as a biomaterial to be used in a device which
would be implanted in the body (note, e.g. the suggestion of benefits for grafts in
4 Paper No. 8, mailed June 27, 1994, at page 4, paragraph no. 5.
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