Appeal 2007-0586
Application 10/387,812
trying to solve, since the problem motivating the Applicants may be only
one of many problems addressed by the patent’s claimed subject matter.
Therefore, it appears to us that a non-analogous art argument that is based on
the problem that the Applicants were trying to solve is an outmoded test at
best, and according to the Supreme Court often leads to an erroneous result.
It is our view that the Supreme Court is endeavoring to replace the old
analogous art test with a test based on the function of the elements and the
predictability of their functions when combined by one of ordinary skill in
the art. Accordingly, since Laufer is directed to an ablation device with a
heat sink and cooling, we believe one of ordinary skill would have
recognized that the functions of these elements in Laufer would have been
an obvious and predictable advantage in combining the subject matter with
the ablation instrument of Morrison. Accordingly, it is our conclusion that
the Examiner has established the prima facie obviousness of the claims on
appeal.
We merely note in passing our findings of fact that establish that at
least four claims (1, 2, 6, and 7), are anticipated by Morrison, a rejection the
Examiner has not made. As always, an analogous art argument is unavailing
when the claimed subject matter is anticipated by the prior art.
CONCLUSION OF LAW
The Examiner has established the prima facie obviousness of claims
1-27. The rejections of the claims on appeal are affirmed.
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