Appeal No. 2002-1492 Page 7
Application No. 09/352,161
Since all the limitations of claims 1 to 25 is not disclosed by Abela for the reasons
set forth above, the decision of the examiner to reject claims 1 to 25 under 35 U.S.C.
§ 102(b) is reversed.
The obviousness rejection
We will not sustain the rejection of claims 1 to 26 under 35 U.S.C. § 103.
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden
of presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531,
1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established by presenting evidence that would have led one of ordinary skill in the art to
combine the relevant teachings of the references to arrive at the claimed invention. See
In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re
Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).
The appellants argue that there is no suggestion to combine the teachings of
Abela and Colan to arrive at the claimed subject matter. We agree. While Colan does
teach (column 8, lines 55-64) attaching a magnetic fragment to the balloon of a catheter
and using an external magnet attached to the end of a rod or wand to steer the catheter,
we see no reason, absent the use of hindsight knowledge derived from the appellants'
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