Appeal 2006-1914
Application 09/764,609
1 Court’s engagement with the question of obviousness, our cases have set
2 forth an expansive and flexible approach ….” KSR at 11. The Court
3 emphasized that “the principles laid down in Graham reaffirmed the
4 ‘functional approach’ of Hotchkiss, 11 How. 248.” KSR at 11 (citing
5 Graham v. John Deere Co., 383 U.S. 1, 12 (1966) (emphasis added)).
6
7 ANALYSIS
8 We begin with the rejection of the claims under 35 U.S.C. § 103(a) as
9 being unpatentable over Chader in view of well known prior art. We turn
10 first to claims 1 and 29. The Examiner proposes to modify the tethered
11 instrument of Chader with a wireless instrument based upon the general
12 concept that wireless transmission is old and well known in the prior art.
13 The Examiner opines that since an artisan is limited to wired or wireless
14 transmission of signals, the selection of either one would have been obvious
15 to an artisan as an artisan would have been motivated by the inherent
16 desirable features of using wireless transmission over wired transmission.
17 (Answer 4). Although the Examiner's position has been clearly articulated,
18 the Examiner does not provide evidence that would have suggested the use
19 of a wireless system for a smart instrument used in a surgery system.
20 Althought, we find from fact 2 that "[t]ypically, the surgical instruments are
21 either tethered to the computer system or are wireless," the Examiner has
22 not relied upon the admitted prior art in conjunction with Chader as the basis
23 for the rejection. We are cognizant of the court's statement in KSR,
24 "[w]hen there is a design need or market pressure to solve a problem and
25 there are a finite number of identified, predictable solutions, a person of
26 ordinary skill has good reason to pursue the known options within his or her
15
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