Appeal No. 2002-2249
Application 09/340,441
Thus, it is clear that the power necessary for the glow discharge polymerization in Loh
Example 1 is applied for a period of time that exceeds the about 10 minutes specified in appealed
claim 1 as appellants point out in the brief. Accordingly, Loh does not describe the claimed
method encompassed by appealed claim 1 within the meaning of § 102(b), and therefore, we
reverse the ground of rejection of appealed claims 1, 3, 4, 10, 12 through 14, 17, 18 and 20 under
§ 102(b) as anticipated by Loh.
In order to establish a prima facie case of obviousness under § 103(a), the examiner must
show that some objective teaching, suggestion or motivation in the applied prior art taken as a
whole and/or knowledge generally available to one of ordinary skill in this art would have led
that person to the claimed invention as a whole, including each and every limitation of the
claims, without recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet,
149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great
Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Fine, 837 F.2d
1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d
469, 473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
The issues in the ground of rejection under § 103(a) based on Stewart are briefed by the
parties on this record on the basis that the claimed glow discharge polymerization coating step
involves coating the entire surface of an implantable device in a single step, and in this respect,
have settled on Stewart teaching and exemplifying coating a 5 foot length of tubing in a time of
20 minutes based on a rate of advance of 3.2 inches/min at a power level of 8 watts at a pulse
width of four milliseconds, as the coating step conditions for purposes of determining whether
Stewart would have reasonably suggested the claimed method to one of ordinary skill in this art
(answer, pages 4-5 and 10-11; brief, e.g., pages 13 and 15-16). Thus, the examiner states that
Stewart differs from the claimed invention in failing “to teach that the time period for plasma
polymerization of the implantable medical device is ten minutes or less” and concludes that it
would have been obvious to coat the 5 foot in less than twenty minutes at a higher power level
and to coat a tube length of less than 5 feet (answer, pages 4-5). Appellants replies that the total
appendix to the brief.
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