Appeal 2006-1914
Application 09/764,609
1 technical grasp. If this leads to the anticipated success, it is likely the
2 product not of innovation but of ordinary skill and common sense. In that
3 instance, the fact that a combination was obvious to try might show that it
4 was obvious under 35 U.S.C. § 103." KSR, 127 S.Ct. at 1742.
5 While based upon all of the evidence of record we agree with the
6 Examiner that an artisan would have had good reason to pursue known
7 options within the artisan's grasp. From the Examiner's reliance on Chader,
8 without further evidence, showing that it was known or obvious to have or
9 use wireless surgical instruments surgical instruments, we do not consider
10 the Examiner to have established that there was an identified, predicted
11 solution, or that there was a design need or market pressure to make the
12 surgical instrument of Chader have a wireless connection. In sum, the
13 Examiner has failed to establish, based on Chader alone, that it would have
14 been obvious to an artisan to replace the tethered connection in Chader with
15 a wireless connection, such that bi-directional communication is solely
16 through a wireless connection and that the smart instrument transmits
17 information when the smart instrument is placed within a field of detection.
18 It follows that we cannot sustain the rejection of claims 1 and 29. We
19 similarly cannot sustain the rejection of claim 23 because the claim also
20 requires a wireless connection between the surgical instrument and the
21 system. The rejection of claims 1, 3-23, 25-29, 31-34, 80-100, 102, 105, and
22 106 under 35 U.S.C. § 103(a) as being unpatentable over Chader is not
23 sustained.
24
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