Appeal No. 2006-1746
Application No. 10/375,679
PRINCIPLES OF LAW (ISSUE III)
On appeal, Applicant bears the burden of showing that the Examiner
has not established a legally sufficient basis for combining the teachings of Cory
and Chester. Applicants may sustain that burden by showing that where the
Examiner relies on a combination of disclosures, the Examiner failed to provide
sufficient evidence to show that one having ordinary skill in the art would have
done what Applicants did. United States v. Adams, 383 U.S. 39 (1966); In re Kahn,
441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); DyStar
Textilfarben GmbH & Co. Deustschland KG v. C.H. Patrick, Co., 464 F.3d 1356,
1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006). The mere fact that all the
claimed elements of steps appear in the prior art is not per se sufficient to establish
that it would have been obvious to combine those elements. United States v.
Adams, supra; Smith Industries Medical systems, Inc. v. Vital Signs, Inc., 183 F.3d
1347, 1356, 51 USPQ2d 1415, 1420 (Fed. Cir. 1999).
ANALYSIS (ISSUE III)
We find from Fact 2 that Cory specifically refers to the Chester patent by
noting that in Chester, the stimulator is clamped onto the syringe and that two
hands are required to operate the device of Chester. Cory asserts that as a result of
this construction, the assembly is long and clumsy, and is extremely awkward to
operate. From this disclosure of Cory, we find that Cory specifically teaches away
from replacing the electrical cables 122, 126, and 1142 with a rigid connection as
in Chester at 20, so as to have the visual indicator rigidly coupled to the nerve
block needle. As to the specific question of "teaching away," our reviewing court
in In re Gurley, 27 F.3d 551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994) stated:
15
Page: Previous 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 Next
Last modified: September 9, 2013