Appeal 2006-2334
Application 09/909,913
ordinary skill would have reasonably expected that Peterson’s apparatus can
be used under Margolis’ processing conditions to achieve the results taught
by Margolis. See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783
(Fed. Cir. 1992) (“The mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the modification obvious
unless the prior art suggested the desirability of the modification.”).
Therefore, the Examiner has not established a prima facie case of
obviousness, and accordingly, we reverse the ground of rejection of claims 1
through 3, 6, 7, 9 through 11, 27, 29, 31 through 34, 92 through 94, 101, and
103 under 35 U.S.C. § 103(a) as unpatentable over the combined teachings
of Margolis and Peterson. The same basic combination was applied in the
grounds of rejection of dependent claims 14 through 16, 18 through 20, 37
through 42, and 97 through 100 under 35 U.S.C. § 103(a), and in the
absence of a prima facie case of obviousness, we reverse these grounds of
rejection as well.
The Primary Examiner’s decision is reversed.
REVERSED
Remand
We decline to exercise our authority under 37 C.F.R. § 41.50(b)
(2006) and enter new grounds of rejection of claims 27, 29 through 34, 37
through 42, 92 through 94, 97 through 101, and 103, which include claim
30, all of which do not contain the limitation “step of pressing using pliable
material in a manner effective for rupturing said collagen protein layer
sufficiently to form an opening therethrough” over Peterson alone and as
combined with any other prior art. For example, we interpreted independent
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