Appeal 2006-3098
Application 10/762,413
1 PRINCIPLES OF LAW
2 On appeal, Appellant bears the burden of showing that the Examiner
3 has not established a prima facie case of non-obviousness. See In re Kahn,
4 441 F.3d 977, 987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); DyStar
5 Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, Co., 464 F.3d
6 1356, 1360-1361, 80 USPQ2d 1641, 1645 (Fed. Cir. 2006).
7 The test for non-analogous art is first whether the art is within the
8 field of the inventor's endeavor and, if not, whether it is reasonably pertinent
9 to the problem with which the inventor was involved. In re Wood, 599 F.2d
10 1032, 1036, 202 USPQ 171, 174 (CCPA 1979). A reference is reasonably
11 pertinent if, even though it may be in a different field of endeavor, it
12 logically would have commended itself to an inventor's attention in
13 considering his problem because of the matter with which it deals. In re
14 Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992).
15
16 ANALYSIS
17 If the rejection were under 35 U.S.C. § 102(e) we would have agreed
18 with the Examiner that the intended use of the structure would not
19 differentiate the claimed apparatus from the applied prior art. However, as
20 noted by the Examiner, Elson does not describe all of the limitations of
21 claim 11 because Elson does not disclose the balloon to be in a rod shape.
22 As a result, the Examiner rejects the claim under 35 U.S.C. § 103(a) on the
23 basis that it would have been obvious to have used a cylindrical shaped
24 balloon as the inflatable rod. However, in order to modify the reference to
25 meet the claimed invention, it is necessary that the reference be analogous
4
Page: Previous 1 2 3 4 5 6 Next
Last modified: September 9, 2013