Appeal No. 2003-1655 Page 4
Application No. 09/800,706
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). Evidence of a
suggestion, teaching, or motivation to modify a reference may flow from the prior art
references themselves, the knowledge of one of ordinary skill in the art, or, in some
cases, from the nature of the problem to be solved, see Pro-Mold & Tool Co. v. Great
Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996),
Para-Ordinance Mfg., Inc. v. SGS Importers Int'l., Inc., 73 F.3d 1085, 1088, 37 USPQ2d
1237, 1240 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996), although "the
suggestion more often comes from the teachings of the pertinent references," In re
Rouffet, 149 F.3d 1350, 1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998).
In the rejection before us in this appeal (answer, pp. 3-4), the examiner
(1) ascertained that Burton taught all the claimed subject matter of claim 31 "except for
having a port proximal to the distal balloon;" and (2) concluded that "[o]ne of ordinary
skill in the art would have found it obvious to include a port between the balloons of
Burton as taught by Afzal in order to allow therapeutic agents to be introduced between
the balloons."
The appellants argue that there is no motivation or suggestion in the applied
prior art for one skilled in the art to have modified Burton to arrive at the claimed subject
matter. We agree.
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