Appeal No. 2005-1078
Application 09/681,303
disclosed therein “is within the knowledge of the skilled artisan.”); In re Preda, 401 F.2d 825,
826, 159 USPQ 342, 344 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but also the inferences
which one skilled in the art would reasonably be expected to draw therefrom.”).
We find that Liprie ‘781 acknowledges that “[i]n one conventional prior art assembly the
core is placed inside a stainless steel capsule with an open end on one side and welded to the
delivery wire or guide wire” (col. 4, ll. 10-13), and that van’t Hooft in fact teaches an
encapsulated radioactive source in which a tubular body with a closed back and cavity
containing the radioactive source is sealed with a plug, which as appellant points out, is then
welded to a flexible cable (col. 4, ll. 20-29, FIG. 1). However, while the purpose of the
encapsulation acknowledged by Liprie ‘781 was to convey the radioactive source through a
body, one of skilled in this art, armed with the knowledge that radioactive sources can be
encapsulated such as shown by the acknowledged prior art, would have recognized that the
“generally cylindrical radioactive source or core” to be “encased within the tube” of the source
wire of Liprie ‘781 (e.g., col. 5, l. 66, to col. 6, l. 1) can be encapsulated for handling prior to
encasing within the tube, thus placing this person in possession of the claimed invention
encompassed by appealed claim 24.
Accordingly, we have again considered the totality of the record before us, weighing all
of the evidence of anticipation found in Liprie ‘7818 with appellant’s countervailing arguments
and evidence for non-anticipation in the brief, and based thereon, conclude that the claimed
invention encompassed by appealed claims 1 through 6, 9 through 15, 17 through 25 and 27
through 31 would have been anticipated as a matter of fact under 35 U.S.C. § 102(b).
Our review of the record further leads us to agree with the supported conclusion
advanced by the examiner that as a matter of law, prima facie, the claimed invention
encompassed by appealed claim 7 would have been obvious over the combined teachings of
8 We have not considered either Narciso nor Ishibe with respect to this ground of rejection as
argued by the examiner in response to appellants’ arguments (answer, pages 7-8). Indeed,
reliance on a reference to support a ground of rejection that is not included in the statement of
the rejection is clearly impermissible. See In re Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406,
407 n.3 (CCPA 1970); cf. Ex parte Raske, 28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int.
1993).
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