Appeal No. 2003-0511
Application No. 09/350,448
filling body) is radiopaque as well as elastic. Nevertheless,
the examiner expresses the following obviousness conclusion in
the paragraph bridging pages 4 and 5 of the Answer:
In view of the embodiment shown in figure 12, it
would have been obvious to one of ordinary skill in the
art to form the mounting body of figure 5, in a fixed
manner and also out of radiopaque material in order to
allow better visual tracking of the device and its
components through the body, particularly in light of
Dusbabek’s own teaching that “other marker arrangements
may be used” and since it is well-known in the art to
form various components of catheters out of radiopaque
material for visual tracking of the device in vivo.
We cannot sustain this rejection.
In resolving the issue of obviousness under Section 103, the
critical inquiry is whether there is something in the prior art
as a whole to suggest the desirability and thus the obviousness,
of making the modification proposed by the examiner. See Fromson
v. Advance Offset Plate, Inc., 755 F.2d 1549, 1556, 225 USPQ 26,
31 (Fed. Cir. 1985).
Here there is nothing in the Dusbabek teachings referred to
by the examiner which would have suggested the desirability, and
thus the obviousness, of modifying the elastic mounting body in
the Figure 5 catheter embodiment so as to be radiopaque as well
as elastic. It is true, as the examiner explains and the
appellants concede, that Dusababek discloses a number of
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