Appeal 2007-1585
Application 10/383,268
“[m]odular sections of the prostheses, or ‘prosthetic modules,’ may be
selectively combined to form a composite prosthesis having characteristics
which are tailored to the specific requirements of the patient.” (Fogarty, col.
3, ll. 9-16). Therefore, those of ordinary skill in the art would have
considered it obvious to modify the shape of Fogarty’s prosthesis in order to
tailor it to the specific requirements of a patient.
Furthermore, we agree with the Examiner that Appellants read Figure
4 of Fogarty in too limited a manner. Fogarty states, “[i]n a particularly
preferred embodiment, multiple prosthetic body modules 94 may be directly
coupled together to form a single composite prosthesis.” (Fogarty, col. 10,
line 48-51). In our view, one of ordinary skill in the art reading Fig. 4 in
conjunction with the disclosure, would have understood that Fogarty was not
limited to the dashed line connections of Figure 4, but contemplated an
entire prosthesis composed of modules 94, or comprising various module
shapes selected based on the characteristics of the blood vessel to be treated.
(Answer 6). See KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007) (It is proper to “take account of the inferences
and creative steps that a person of ordinary skill in the art would employ.”).
“[W]hen the question is whether a patent claiming the combination of
elements of prior art is obvious” the relevant question is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct.
1727, 1731, 82 USPQ2d 1385, 1396 (2007). In addition, “[w]hen there is a
design need or market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of ordinary skill has
good reason to pursue the known options within his or her technical grasp.
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