Appeal No. 2005-0929
Application No. 09/852,519
ophthalmic device is a general knowledge available in the art.” Id. Thus, the examiner
concludes that
it would have been obvious to one of ordinary skill in the art at the time of
invention to employ a tracer such as florescence [sic, fluorescence?] into the
matrix of Seder’s or Freeman’s plugs, because as taught by Gwon, the ordinary
artisan would have had a reasonable expectation of success in improving the
visualization of the plug in the recipient’s eyes [Answer, p. 5].
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72,
223 USPQ 785, 787-88 (Fed. Cir. 1984). To that end, it is the examiner’s responsibility
to show that some objective teaching or suggestion in the applied prior art, or
knowledge generally available [in the art] would have led one of ordinary skill in the art
to combine the references to arrive at the claimed invention. Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629 (Fed. Cir.
1996).
Here, we agree with the appellant’s that Gwon is primarily directed to “a method
for determining an amount of medication in an implantable device.” Brief, p. 4.
Attention is directed, for example, to the abstract which states that “a tracer may be
incorporated into the device to enable visual indication of the amount of active agent in
said device when said device is disposed under the conjunctiva.” In addition, we find
that the device disclosed by Gwon is not a plug as set forth in the claims before us, but
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007