Appeal No. 2004-0455 Page 5
Application No. 09/540,592
added in the discussion of the appellant’s arguments on page 6 of the Answer. The
latter embodiment provides a section of “memory metal 120" which can be pushed from
the end of the straight rigid section in which it is housed, whereupon it assumes a
curved shape for in order to “alter the dispensing angle as sleeve 122 is moved
proximally” (column 8, lines 43-48).
What we find to be lacking in the examiner’s rejection is the required suggestion
to combine the references in the manner proposed. Antanavich discloses in the
embodiment of Figure 9 a flexible section interposed between the two rigid sections “for
application of tissue sealant at a distance from the syringe (e.g., in a body cavity made
accessible by laparotomy).” From our perspective, one of ordinary skill in the art would
have been taught nothing more than this by the embodiment of the Tovey invention
shown in Figures 12 and 12A. With regard to the embodiment shown in Tovey’s
Figures 13 and 13A, the mere fact that the prior art structure could be modified does
not make such a modification obvious unless the prior art suggests the desirability of
doing so,2 and the examiner has not adduced evidence why one of ordinary skill in the
art would have been motivated to install a section of curved “memory metal” or other
form of “preset bend” in the Antanavich device in place of or in conjunction with the
flexible section already present. It therefore is our opinion that the examiner has failed
2In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
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