Appeal 2007-2557
Application 10/094,866
modification was within the capabilities of one skilled in the
art, unless the claimed ranges “produce a new and unexpected
result which is different in kind and not merely in degree from
the results of the prior art.” In re Aller, 42 C.C.P.A. 824, 220
F.2d 454, 456, 105 USPQ 233, 235 (1955); see In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir.
1990).
Therefore, it is my opinion that a minor modification of the prior art, such as
optimizing the number of narrowings in an interconnection bridge to include
more than one does not distinguish the claimed product from the prior art.
See KSR, at 1741, 82 USPQ2d at 1396 (It is proper to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”). “When 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. If this leads to the anticipated success, it is likely
the product not of innovation but of ordinary skill and common sense.”
KSR, at 1732, 82 USPQ2d at 1397.
I am not persuaded by Appellants’ assertion that neither Hojeibane
nor Dinh teach a plurality of narrowings (Br. 7 and 8). Instead, based on the
foregoing discussion, it is my opinion that it would have been prima facie
obvious to a person of ordinary skill in the art at the time the invention was
made to modify Ley’s stent to include a plurality of narrowings in at least
one interconnection bridge for the expected benefit of increasing the
flexibility of the stent as taught by both Hojeibane and Dinh.
On reflection, it is my opinion that the stent set forth in claim 8 is
prima facie obvious under 35 U.S.C. § 103(a) over the combination of Ley,
Hojeibane, and Dinh.
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