Appeal 2007-2413
Application 10/041,117
Claim 20 stands rejected under 35 U.S.C. § 103(a) as being obvious
over Rhodes in view of the instant Specification.
Rhodes is relied upon as above (Answer 4). The Examiner states that
while Rhodes teaches the use of a gasket, Rhodes teaches that the gasket is
made out of mesh, not foam as required by claim 20 (id.). According to the
Examiner, Appellants admit in the Specification at page 21 “that open cell
foams are well known materials for use with gaskets, to those of ordinary
skill in the art, and obvious equivalents to the woven and knitted meshes
such as the ones disclosed by Rhodes.” (Answer 4-5.)
The Examiner concludes that “it would have been obvious to one
having ordinary skill in the art at the time the invention was made to use an
open cell foam for the gasket material, since it has been held to be within the
general skill of a worker to select a known material on the basis of its
suitability for the intended use . . . .” (Id. at 5.)
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993) (citations omitted). In order to
determine whether a prima facie case of obviousness has been established,
we considered the factors set forth in Graham v. John Deere Co., 383 U.S.
1, 17 (1996): (1) the scope and content of the prior art; (2) the differences
between the prior art and the claims at issue; (3) the level of ordinary skill in
the relevant art; and (4) objective evidence of nonobviousness, if present.
As to this rejection, Appellants argue that “Rhodes fails to disclose the
first prosthesis as claimed in claim 1,” and that “there is simply no teaching
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