Appeal No. 2003-1374
Application No. 09/591,947
page 2, with the Brief in its entirety. Thus, we concur with the
examiner that the combined teachings of Hayes and Prescott would
have suggested to one of ordinary skill in the art to employ either
the semiconductor light sources and their associated electrical
energizing means taught by Prescott or the optical fiber light
sources and their associated energizing means in the catheter of
the type described in Hayes. See In re Gorman, 933 F.2d 982,
986-87, 18 USPQ2d 1885, 1888-89 (Fed. Cir. 1991)(“The extent to
which such suggestion [to select elements of various teachings in
order to from the claimed invention] must be explicit in, or may be
fairly inferred from, the references, is decided on the facts of
each case, in light of the prior art and its relationship to the
applicant’s invention (emphasis ours).”); In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981)(“The test for obviousness
is not whether the features of a secondary reference may be bodily
incorporated into the structure of the primary reference; nor is it
that the claimed invention must be expressly suggested in any one
or all of the references. Rather, the test is what the combined
teachings of the references would have suggested to those of
ordinary skill in the art.”). Accordingly, we determine that the
examiner has established a prima facie case of obviousness
regarding the claimed subject matter.
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