Ex parte Jones

Board of Patent Appeals and Interferences

Jul 7, 1999

08606651 (B.P.A.I. Jul. 7, 1999)

Application for patent filed February 26, 1996.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 10
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MARK S. JONES
__________
Appeal No. 98-3327
Application 08/606,6511
__________
ON BRIEF
__________
Before CALVERT, ABRAMS, and NASE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 1, 4-6 and 20. Claims 2, 3 and 7
have been canceled and claims 8-19 have been withdrawn from
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Application No. 08/606,651
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consideration as being drawn to a non-elected invention. No
claims have been allowed.
The appellant's invention is directed to an ophthalmic
probe. The claims on appeal have been reproduced in an
appendix to the Brief.
THE REFERENCE
Easley et al. (Easley) 5,441,496 Aug. 15,
1995
THE REJECTION
Claims 1, 4-6 and 20 stand rejected under 35 U.S.C. § 103
as being unpatentable over Easley.
The rejection is explained in Paper No. 6 (the final
rejection).
The opposing viewpoints of the appellant have been
expressed in the Brief.
OPINION
As set forth in independent claim 1, the appellant’s
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Application No. 08/606,651
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invention is directed to an ophthalmic probe for surgery and
the like, which comprises a handpiece having a hollow needle
extending therefrom, a connector for connecting the handpiece
to a source of energy, an optical fiber for transmitting the
energy to the distal end of the needle, and a soft tip molded
in place on an inner bushing of the needle that extends
outwardly from an outer metal tube. We agree with the
examiner that Easley discloses all of the subject matter of
claim 1 except for the requirement that the soft tip be
“molded in place to the inner bushing,” for in the Easley
arrangement, the soft tip is not located at the tip of the
outer metal tube of the needle, but is held in place by means
of an extension that is friction fitted into the annular space
between the outer metal tube and the inner bushing. However,
it is the examiner’s position that
[i]t is considered an obvious design consideration
to have molded the soft tip to the inner bushing, as
is well known in the art, in as much as this means
for attachment is different in kind but not in
effect (Paper No. 6, page 2).
The appellant argues that the required motivation for doing so
is lacking. On this point, we find ourselves in agreement
with the appellant, and it is for this reason that we cannot
Appeal No. 98-3327
Application No. 08/606,651
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support the examiner’s position.
It is axiomatic that the test for obviousness is what the
combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). In
establishing a prima facie case of obviousness, it is
incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a
prior art reference or to combine reference teachings to
arrive at the claimed invention. See Ex parte Clapp, 227 USPQ
972, 973 (Bd. Pat. App. & Int. 1985). To this end, the
requisite motivation must stem from some teaching, suggestion
or inference in the prior art as a whole or from the knowledge
generally available to one of ordinary skill in the art and
not from the appellant's disclosure. See, for example,
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1052, 5
USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
The examiner has stated, in so many words, that molding
in place as a technique for attaching two elements of a device
was known in the art at the time of the appellant’s invention.
Appeal No. 98-3327
Application No. 08/606,651
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However, no evidence has been provided in support of this
conclusion, which relegates it to the status of
unsubstantiated opinion. The examiner then moves on from this
to the further conclusion that the presence of such knowledge
in the art in and of itself would have made it obvious to
substitute molding in place for other methods of attachment.
We cannot agree, for even taking the examiner’s first
statement at face value, the mere fact that the prior art
structure could be modified does not make such a modification
obvious unless the prior art suggests the desirability of
doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). The examiner has not set forth, and we
are at a loss to perceive on our own, any teaching, suggestion
or incentive which would have led one of ordinary skill in the
art to modify the Easley probe in the manner proposed by the
examiner. That is, why would one of ordinary skill in the art
have been motivated to discard the attachment means disclosed
by Easley in favor of the one in which the soft tip is molded
in place to the inner bushing of the needle. From our
perspective, the only suggestion for doing so is found in the
luxury of the hindsight afforded one who first viewed the
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Application No. 08/606,651
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appellant’s disclosure. This, of course, is improper. See In
re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed.
Cir. 1992).
It is our conclusion that a prima facie case of
obviousness has not been established on the record with regard
to the subject matter recited in claim 1. This being the
case, we will not sustain the rejection of claim 1 or, it
follows, of claims 4-6 and 20, which depend therefrom.
The decision of the examiner is reversed.
REVERSED
Ian A. Calvert )
Administrative Patent Judge )
)
Appeal No. 98-3327
Application No. 08/606,651
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)
)
Neal E. Abrams ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Jeffrey V. Nase )
Administrative Patent Judge )
tdc
Appeal No. 98-3327
Application No. 08/606,651
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