Appeal No. 2003-1655 Page 6
Application No. 09/800,706
specifically, Afzal's invention relates to a perfusion catheter, and methods of use, that
enable the catheter to be intraoperatively placed in the aorta using a sutureless
arteriotomy seal.
As set forth above, teachings of references can be combined only if there is
some motivation, suggestion or incentive to do so. Here, the applied prior art contains
none. That is, there is no motivation or suggestion in the applied prior art for one skilled
in the art at the time the invention was made to have modified Burton to have a port
proximal to Burton's distal balloon (i.e., dilation balloon 18). The disparate teachings of
the applied prior art1 and the manner in which they are proposed to be combined
indicate, in our view, that the examiner has engaged in an impermissible hindsight
reconstruction of the appellants' invention using the claims as a template to selectively
piece together isolated disclosures in the prior art.2
For the reasons set forth above, the decision of the examiner to reject claims 31
to 34 under 35 U.S.C. § 103 is reversed.
1 Burton and Afzal are directed to very different types of catheters so much so that it would not
have been obvious at the time the invention was made to a person of ordinary skill in the art to have
applied the teachings of Afzal's catheter to the catheter of Burton.
2 The use of hindsight knowledge derived from the appellants' own disclosure to support an
obviousness rejection under 35 U.S.C. § 103 is impermissible. See, for example, W. L. Gore and
Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007