Appeal No. 2004-0358 Page 7
Application No. 08/997,748
the combined disclosures of Jacobsen and Suzuki.
In response, applicants’ principal argument is that Jacobsen does not teach
angiography. Applicants do not argue, or even discuss, the scope and content of
Suzuki in their Appeal Brief or Reply Brief. Applicants do not contend that the
combination of Jacobsen and Suzuki is improper, or that the combination would not
have led a person having ordinary skill to the claimed invention. On this record, we
agree with the examiner’s conclusion that the subject matter sought to be patented in
claims 94 through 96 and 100 through 118 would have been obvious based on the
combined disclosures of Jacobsen and Suzuki. See In re Young, 403 F.2d 754, 757,
159 USPQ 725, 728 (CCPA 1968)(“Appellants have failed to appreciate that they
cannot show nonobviousness by attacking the references individually where the
rejection is based on a combination of references”); and 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”).
In the “Issues” section of their Appeal Brief, applicants state that
these issues [35 U.S.C. § 112, first paragraph, written description, and
35 U.S.C. § 103 (a), obviousness] are inter-related since, if the claims do
not contain new matter, and are described in the specification, then they
are entitled to priority of at least 1985 and, thus, the rejection under §103
is moot. [Paper No. 39, page 2, last paragraph]
That statement, however, amounts to a non sequitur. Further, it appears that
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