Ex Parte Liprie - Page 9


               Appeal No. 2005-1078                                                                                                  
               Application 09/681,303                                                                                                

               Liprie ‘781, Suthanthiran9 and Liprie ‘300 to one of ordinary skill in this art at the time the                       
               claimed invention was made.  Thus, we again evaluate all of the evidence of obviousness and                           
               nonobviousness based on the record as a whole, giving due consideration to the weight of                              
               appellant’s arguments in the brief.  See generally, In re Oetiker, 977 F.2d 1443, 1445, 24                            
               USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788                            
               (Fed. Cir. 1984).                                                                                                     
                       We find no argument in appellant’s brief with respect to the combined teachings of Liprie                     
               ‘781 and ‘300 (brief, pages 9-10).10  We agree with the examiner’s finding (answer, pages 5 and                       
               10) that Liprie ‘300 would have disclosed to one of ordinary skill in this art radioactive sources                    
               encapsulated in a rounded capsule for integration within a source wire (abstract, FIG. 1 and col.                     
               5).  Thus, Liprie ‘300 combined with Liprie ‘781 provide substantial evidence in support of the                       
               examiner’s position.                                                                                                  
                       Accordingly, based on our consideration of the totality of the record before us, we have                      
               weighed the evidence of obviousness found in the combined teachings of Liprie ‘781,                                   
               Suthanthiran, and Liprie ‘300 with appellant’s countervailing evidence of and argument for                            
               nonobviousness and conclude that the claimed invention encompassed by appealed claims 7, 8,                           
               16 and 26 would have been obvious as a matter of law under 35 U.S.C. § 103(a).                                        
                       On the same record, we agree with the supported conclusion advanced by the examiner                           
               that as a matter of law, prima facie, the claimed invention encompassed by appealed claim 1                           
               would have been obvious over the combined teachings of Liprie ‘781, Narciso and Ishibe11 to                           
               one of ordinary skill in this art at the time the claimed invention was made.  Thus, we again                         
               evaluate all of the evidence of obviousness and nonobviousness based on the record as a whole,                        
               giving due consideration to the weight of appellant’s arguments in the brief.  See generally,                         
               Oetiker, 977 F.2d at 1445, 24 USPQ2d at 1444; Piasecki, 745 F.2d at 1472, 223 USPQ at 788.                            

                                                                                                                                    
               9  A discussion of Suthanthiran is not necessary to our decision. See In re Kronig, 539 F.2d 1300,                    
               1302-04, 190 USPQ 425, 426-28 (CCPA 1976).                                                                            
               10  This ground of rejection has been of record since the non-final Office action mailed August                       
               13, 2002.                                                                                                             
               11  A discussion of Ishibe is not necessary to our decision. See In re Kronig, 539 F.2d 1300,                         
               1302-04, 190 USPQ 425, 426-28 (CCPA 1976).                                                                            

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