Appeal 2007-2813
Application 10/685,744
must either be in the field of the applicant’s endeavor or, if not, then be
reasonably pertinent to the particular problem with which the inventor was
concerned.” In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). We agree
with the Examiner that Appellants have unduly limited at least the problem
with which the inventors were concerned (Answer 12).
Claim 1 is directed to an apparatus for delivering electrical energy to
tissue within a patient. The problem with which Appellants were concerned
was how to also deliver fluid, specifically electrolytic fluid, to the tissue
(Specification 1-2). In particular, as noted by Appellants, the Specification
(page 2, lines 7-15) “recognizes that there is a problem [in] using a separate
syringe to inject saline into the tissue to be ablated” (Reply Br. 3). To
overcome this problem, the Specification describes including an infusion
lumen for delivering fluid in one or more of the needles in the apparatus for
delivering electrical energy (Specification 3). VanTassel relates to needles
for delivering fluid to tissue within a patient (VanTassel, col. 2, ll. 35-49).
Thus, we agree with the Examiner that VanTassel is reasonably pertinent to
the particular problem with which the inventor was concerned.
Appellants also argue that “there is no suggestion in VanTassel to
modify the Edwards ablation device in a manner that would render [claim 1]
obvious” (Br. 6). In particular, Appellants argue that the “Examiner has not
provided any reason why VanTassel would suggest, explicitly or implicitly,
to one of ordinary skill in the art to make such a modification to the Edwards
device” (id. at 7). Instead, “because the teachings of VanTassel are
irrelevant to tissue ablation, they cannot be fairly applied to Edwards” (id.).
“There is simply no suggestion from [VanTassel] that electrically conductive
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: September 9, 2013