Appeal 2007-2812
Application 10/337,236
Anderson in view of Engelson
Claims 4-5 and 17 stand rejected under 35 U.S.C. § 103(a) over
Anderson in view of Engelson (Answer 3).
The Examiner contends:
Anderson discloses a magnetically navigable guidewire 23, as
described in claims 3 or 16 above, that teaches all the
limitations of the claims except the radiopaque hollow cylinder
tip is neither made of gold, gold alloys, platinum, or platinum
alloys. Engelson et al. teach a radiopaque medical device
wherein the tip is made of a radiopaque element from a list
consisting of gold and platinum. It would have obvious at the
time Applicant’s invention was made to provide a magnetically
navigable guidewire similar to that of Anderson with a
radiopaque tip similar to that of Engelson et al. in order to
permit monitoring of its tip location (see Engelson et al.,
column 8/lines 25-30).
(Final Office Action 6.)
It is the Examiner’s burden to establish prima facie obviousness. See,
e.g., In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.
1993). Obviousness requires a teaching that all elements of the claimed
invention are found in the prior art and “a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007). Here, the Examiner has
provided evidence of all elements of the claimed invention and a reason that
would have prompted a person of skill in the art to combine them to achieve
the claimed invention. Appellants do not identify any defect in the
Examiner’s reasoning and we find none. Consequently, we affirm the
rejection of claim 4. Claims 5 and 17 fall with claim 4 because they were
not separately argued.
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