Appeal No. 2005-0980 10
Application No. 09/818,228
the solicitor has pointed out, they are not based on limitations appearing in the claims.”).
The cutting limitation argued by the appellant is not recited in claim 3.
In the second place, we find this argument to be unpersuasive since the references
need not be combined for the reasons contemplated by the appellant. In re Beattie, 974
F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)(“As long as some motivation or
suggestion to combine reference is provided by the prior art taken as a whole, the law
does not require that the references be combined for the reasons contemplated by the
inventor.”). Although the prior art references do not suggest employing markings for the
cutting purpose proposed by the appellant, they provide ample suggestion or motivation to
employ a plurality of markings on the nasal catheter of the type described in Lethi as
indicated supra.
Thus, based on the totality of record, including due consideration of the appellant’s
arguments, we determine that the preponderance of evidence weighs most heavily in favor
of obviousness of the subject matter of claims 3 and 16 within the meaning of Section
103(a). Accordingly, we affirm the examiner’s decision rejecting claims 3 and 16 under
Section 103(a).
REJECTION BASED ON LETHI AND BRAIN
As evidence of obviousness of the subject matter defined by claims 4 and 17 under
Section 103(a), the examiner relies on the combined disclosures of Lethi and Brain. See
the Answer, page 9. The disclosure of Lethi is discussed above. As acknowledged by the
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