Appeal 2007-1585
Application 10/383,268
The test of obviousness is “whether the teachings of the prior art,
taken as a whole, would have made obvious the claimed invention.” In re
Gorman, 933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991).
Precise teachings directed to the specific subject matter of a claim are not
required to reach a conclusion of obviousness. KSR Int’l Co. v. Teleflex Inc.,
127 Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). “[T]he teaching,
motivation, or suggestion may be implicit from the prior art as a whole,
rather than expressly stated in the references. . . . The test for an implicit
showing is what the combined teachings, knowledge of one of ordinary skill
in the art, and the nature of the problem to be solved as a whole would have
suggested to those of ordinary skill in the art.” In re Kahn, 441 F.3d 977,
987-988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006).
In our view, the combined disclosure of the individual modules in
Figure 4 along with the disclosure in Fogarty that the modules are selected to
conform to a blood vessel based on the patient’s needs, would have led one
of ordinary skill in the art to consider appropriate combinations of the
modules in Figure 4, including that outlined by the Examiner, meeting the
limitations of the stent-graft of claim 34. See also Fogarty, col. 1, ll. 47-49.
It is well settled that the “discovery of an optimum value of a result
effective variable in a known process is ordinarily within the skill of the art,”
In re Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980)
(citations omitted). In the present case, one of ordinary skill in the art
reading Fogarty would have understood that the cross-section of a stent is a
result effective variable. Specifically, Fogarty states that “[p]roper matching
of the prosthesis to the blood vessel is critical to the treatment of an
aneurysm.” (Fogarty, col. 1, ll. 47-49). Fogarty further states that
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