Appeal 2007-1451
Application 09/970,146
1 incentives and other market forces can prompt variations of it, either in the same
2 field or a different one. If a person of ordinary skill can implement a predictable
3 variation, §103 likely bars its patentability.” Id. For the same reason, “if a
4 technique has been used to improve one device, and a person of ordinary skill in
5 the art would recognize that it would improve similar devices in the same way,
6 using the technique is obvious unless its actual application is beyond that person’s
7 skill.” id. “Under the correct analysis, any need or problem known in the field of
8 endeavor at the time of invention and addressed by the patent can provide a reason
9 for combining the elements in the manner claimed.” Id at 1732, 82 USPQ2d at
10 1397.
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12 ANALYSIS
13 Claims 1 and 3-8 rejected under 35 U.S.C. § 102(e) as anticipated by Maseda.
14 The Appellants contend that the claimed element of at least one electrode
15 coupled with the device body, where the at least one electrode is configured to
16 transmit and receive electrical signals to and from tissue is missing from Maseda.
17 To reject a claim under novelty, all claimed subject matter must be shown, whether
18 explicitly, implicitly, or inherently, in the single reference relied upon (See
19 Verdegaal, supra).
20 Maseda shows the remaining subject matter of claim 1, and the Appellants do
21 not contend otherwise (FF 01-06).
22 The Examiner contends that the device body itself is equivalent to the claimed
23 electrode. The Examiner shows much creativity in applying known scientific facts
24 regarding the conductivity of the platinum in the device body toward an argument
25 of inherency. But, in the final analysis, the Examiner has not shown that the
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