Appeal 2007-1451
Application 09/970,146
1 provide, where the modified apparatus is obvious in view of the prior art and where
2 the retained portion of the subject matter will operate on the same principles as
3 before, “are not authority for holding a rejection improper under such
4 circumstances.” In re Umbarger, 407 F.2d 425, 430-31, 160 USPQ 734, 738
5 (CCPA 1959), distinguishing Ratti. Thus, modifying Lieber by substituting a
6 rheometric device body for the catheter still operates on the principle of Maseda,
7 and the combination remains flexible and able to be guided for performing medical
8 procedures, as needed in Lieber, Maseda, and the claimed invention.
9 Moreover, Lieber uses a balloon catheter for navigation in the heart (FF 12).
10 Lieber’s invention only goes to obviating the need for isolation of the leads to its
11 electrode (FF 09). Maseda would provide an addition to, not a change to, Lieber’s
12 method of navigation. Further, Maseda specifically describes its application
13 toward balloon catheters, such as Lieber’s (FF 08).
14 The Appellants contend there is no motivation to combine Maseda with Lieber,
15 but Maseda describes the advantages of its material in a device such as that in
16 Lieber (FF 08). As to the claim as a whole, we note that applying Maseda’s device
17 housing to Lieber’s electrode within such a device, provides the advantages taught
18 by Maseda toward a device that must be navigated within a body, where the device
19 contains the electrode whose need is taught by Lieber.
20 Thus, the Examiner has met the requirements of Graham v. Deere in finding
21 that all of the claimed subject matter is described by Maseda and Lieber and that
22 one of ordinary skill would have been led to combine those references to achieve
23 the claimed subject matter.
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