Appeal No. 2005-2690
Application No. 09/935,442
DISCUSSION
Obviousness
The examiner rejected claims 1-6, 8-13, 15, 26-28, and 47-52 under 35 U.S.C.
§ 103(a) as obvious over Dinh2 in view of Delmotte3 and Sawhney.4
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532,
28 USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is
established when the teachings from the prior art itself would appear to have suggested
the claimed subject matter to a person of ordinary skill in the art. In re Bell, 991 F.2d
781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993). Furthermore, it is well-established
that the conclusion that the claimed subject matter is prima facie obvious must be
supported by evidence, as shown by some objective teaching in the prior art or by
knowledge generally available to one of ordinary skill in the art that would have led that
individual to combine the relevant teachings of the references to arrive at the claimed
invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
With this as background, we analyze the prior art applied by the examiner in the
rejection of the claims on appeal.
It is the examiner’s position that (Answer, pages 3-4):
The invention of Dinh is directed to the use of an intraluminal stent
2 Dinh et al., U.S. Patent No. 5,510,077, issued April 23, 1996.
3 Delmotte et al., U.S. Patent No. 5,989,215, issued November 23, 1999.
4 Sawhney et al., U.S. Patent No. 6,352,710, issued March 5, 2002.
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