Appeal 2007-1451
Application 09/970,146
1 On the other hand, as Lieber suggests the desirability of placing an electrode
2 within a flexible device for the purpose of cardiac measurement (FF09), Maseda
3 describes the desirability of making a flexible device that travels within a body,
4 such as Lieber’s, more flexible and steerable (FF 08).
5 The Appellants contend that applying Maseda’s teachings to Lieber would
6 impermissibly change Lieber’s principle of operation, citing In re Ratti, 270 F.2d
7 810, 123 USPQ 349 (CCPA 1959). While Ratti held that a combination of
8 references that would require a substantial reconstruction and redesign of the
9 elements shown the prior art as well as a change in the basic principles under
10 which the prior art was designed to operate is not a proper ground for an
11 obviousness rejection, 270 F.2d at 813, 123 USPQ at 352, what Ratti was referring
12 to was reconstruction and redesign of how all the elements interrelate in a manner
13 relying on operational principles unforeseeable to a person of ordinary skill.
14 In Ratti, claims were directed to an oil seal comprising a bore engaging portion
15 with outwardly biased resilient spring fingers inserted in a resilient sealing
16 member. The primary reference relied upon in a rejection based on a combination
17 of references disclosed an oil seal wherein the bore engaging portion was
18 reinforced by a cylindrical sheet metal casing. Its seal was incompressible and the
19 device required rigidity for operation, whereas the claimed invention required
20 resiliency.
21 But Lieber’s electrode coupled with Maseda’s device body does not do such
22 violence to the operating principles of Lieber. Modifications by substitution, even
23 if they omit the subject matter portion which a prior art patentee apparently
24 regarded as his contribution to the art along with such advantages as it might
25
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