Appeal 2007-2812
Application 10/337,236
characteristic relied on.” In re Swinehart, 439 F.2d 210, 213, 169 USPQ
226, 229 (CCPA 1971); In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433 (CCPA 1977). See also In re Spada, 911 F.2d 705, 709, 15 USPQ2d
1655, 1658 (Fed. Cir. 1990). Having shown that Anderson’s device has the
same structure as the claimed guidewire (FF 8-12), we find that the
Examiner properly shifted the burden to Appellants to prove that it would
not deflect at least 30 degrees when contacted with the magnitude of
magnetic field recited in claim 14.
Appellants contend that the claimed
magnetic field strength of not more than .15 Tesla is well below
that which could attract the present magnetically responsive
element towards the direction of a magnet (the only direction
which Anderson discloses). As Anderson discloses the
attraction of a highly magnetic tip towards an external magnet,
the structure recited in Anderson is likely to be attracted
towards the external magnet as intended, rather than aligning
with the field of the magnet.
(Br. 8).
We are not persuaded by this argument. Anderson describes a
guidewire which satisfies the structural requirements of claim 14.
Appellants argue that Anderson describes “a highly magnetic tip” (Br. 8),
but this does not distinguish it from the magnetic element of claim 14 which
is not limited to a particular magnetic material or amount of magnetic
attractiveness. There is no evidence in the record rebutting the Examiner’s
reasonable presumption that Anderson’s guidewire would perform the same
function in response to a 0.15 Tesla field as recited in claim 14.
Accordingly, we affirm the rejection of claim 14. Claims 13, 19, and 20 fall
with claim 14 because they were not separately argued.
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