Appeal No. 2002-2249
Application 09/340,441
Accordingly, we must conclude that the examiner has failed to establish that the claimed
method as encompassed by appealed claim 5 is prima facie obvious over combined teachings of
Ovshinsky and Loh, and therefore reverse the ground of rejection of appealed claims 5, 7, 11 and
19 under § 103(a) as being unpatentable over Ovshinsky in view of Loh.
The examiner’s decision is reversed.
Other Issues
We decline to exercise our authority under 37 CFR § 1.196(b) and enter on the record
new grounds of rejection of the appealed claims with respect to following matters, and instead
suggest that the examiner consider the following upon any further prosecution of the appealed
claims subsequent to the termination of this appeal.
We noted above that claims 6 and 9 have not been included in any of the grounds of
rejection advanced on appeal and thus suggest that the patentability of these claims over prior art
be considered.
The application of the teachings of Loh to the appealed claims under § 103(a) stands on a
different footing than applying the reference to the same appealed claims under § 102(b). See In
re Wiggins, 488 F.2d 538, 543, 179 USPQ 421, 425 (CCPA 1973) (a reference that does not
anticipate the claimed invention under § 102(b) can still be applied thereto “as evidence of
obviousness under § 103 for all it fairly suggests to one of ordinary skill in the art”).
Accordingly, we suggest that the examiner consider the application of Loh to the claimed method
encompassed by at least claims 1, 3, 4, 10, 12 through 14 and 17, leaving it to the examiner to
apply any other applicable prior art developed in this respect.
In view of our determination with respect to appealed claims 15 and 16 under § 103(a) as
being unpatentable over Stewart above (see p. 6), we suggest that the examiner consider whether
these claims encompass methods which continuously treat a part of the surface of an implantable
device as it travels through a monomer deposition zone for about 10 minutes or less at the
specific power level for the thus treated part of the surface, or are limited to a batch treatment of
a part of that surface in such zone, and accordingly apply Stewart and any other applicable prior
art developed in this respect to at least claim 15 and 16.
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