Appeal No. 96-3717
Application 08/229,115
disclosed by Lambert to be a description of sufficient specificity to constitute a description within the
purview of 35 U.S.C. § 102(b) anticipation. In re Schaumann, 572 F.2d 312, 315, 197 USPQ 5, 8
(CCPA 1978). Lambert does not specifically disclose a range of less than 5 wt% nor does Lambert give
an example having a value of less than 5 wt%. For this reason alone, we cannot sustain the examiner’s
rejection of claims 12, 13, 16-22 and 25-30 under 35 U.S.C. § 102(b) as anticipated by Lambert.
However, we will affirm the rejection of these claims under 35 U.S.C. § 103 over Lambert. The
disclosure of water absorption of less than 10 wt% would be suggestive of water absorption amounts of
5 wt% or less since this range is encompassed within Lambert’s less than 10 wt%. Ex parte Lee, 31
USPQ 1105, 1106 (Bd. App. & Int. 1993). Moreover, Lambert discloses that his polyurethane medical
tube should “remain stiff for the length of time required for insertion and placement to prevent binding,
kinking or water absorption from the skin tissue” and that once inserted it would “absorb water rapidly from
blood and quickly become soft for safety during the time required for advancement and positioning” of the
tube (col. 3, lines 4-9). These properties of the tube would appear to meet appellants’ objective of
providing a tube comprising a polyurethane composition which is initially stiff, but once inserted into the
body, will soften. Clearly, the softening would lessen pain or physical disorder which is associated with
materials which remain stiff after being inserted into the body. These characteristics of Lambert’s
polyurethane would appear to meet the water absorption, tan * and G properties claimed by appellants.J J
Although Lambert’s medical tube is a hydrophilic polyurethane coated with a hydrophobic polyurethane,
appellants’ claims use the transitional term “comprising” which opens the claim to a multi-layered tube.
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