Appeal No. 2006-1603
Application No. 10/646,675
We note that the examiner asserted an alternate rejection under 35 U.S.C. § 103
(Answer p. 4). The examiner argued (Answer p. 10) that one of ordinary skill in the art
would have been motivated to form an obturator as a monolithic structure so as to make
what is separate, integral, which makes for ease of assembly and use. The appellant
has not argued or provided any evidence that one of ordinary skill would not have had
such a motivation to form an obturator as a monolithic structure and therefore the
examiner’s statement of essentially notoriously well known construction techniques is
sufficient evidence to meet the burden of establishing this element of the claim 18
subject matter1.
The appellant argues (Brief p. 11) that Vidal fails to show the claim limitation of
an orientation indicator located near the proximal end which enables a user to
determine by touch the relative position of the tip at the distal end. The examiner
responds (Answer p. 4 and 8) that defining a raised surface at the proximal end is
manifestly capable of functioning as an orientation indicator, and enables a user to
determine by touch the relative position of the tip at the distal end. To this, the appellant
responds (Reply Brief p. 3) that the difference in diameters is substantially the same for
all points around the circumference of the shaft and handle and the only information that
can be obtained by touch from this difference in diameters is that a change in diameter
exists near the most proximal part of the obturator.
1 We note that Metcalf, applied in the other rejection under 35 U.S.C. § 103 in this appeal, is issued to the
same assignee, Minnesota Mining and Manufacturing Company, with one inventor, i.e. Gerald L. Metcalf,
in common with Vidal. Fig. 4 of Metcalf shows a monolithic obturator for use in endoscopic surgery,
supporting the examiner’s assertion that monolithic obturators would be within the capacity of one of
ordinary skill in the art.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007