Appeal No. 2001-0547 Page 8
Application No. 08/689,400
distal end (column 2). It is the examiner’s view that Meador would have suggested to
one of ordinary skill in the art the installation of a one-way valve on the proximal end of
the Nicholas tubular member “in order to prevent liquid flowing back down from the
uterus and to avoid producing air bubbles in the fluid being infused in [sic, into] the
uterus” (Answer, page 7).
The mere fact that the prior art structure could be modified does not make such
a modification obvious unless the prior art suggests the desirability of doing so. See In
re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). It is our view
that the use of a luer lock by Nicholas indicates that provision for flow in both directions
through the tubular member is a feature of the invention. This being the case,
modification of the Nicholas system by placing a one-way valve at the proximal end of
the tubular member would significantly change its capabilities by limiting flow to only
one direction. In addition, when the syringe is in place to inject fluid into the tubular
body, fluid is precluded from being discharged therefrom, and thus it would act as a one
way valve. The examiner has not provided evidence that the Nicholas system would
benefit from the presence of a one way valve at its proximal end, and therefore it
appears to us that the only suggestion for doing so is found in the hindsight afforded
one who first viewed the appellants’ disclosure. This, of course, is not a proper basis
for a rejection under Section 103. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780,
1784 (Fed. Cir. 1992).
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