Appeal No. 96-3717
Application 08/229,115
Also, while Lambert appears to disclose the molar composition of the hydrophobic polyurethane as being
prepared using stochiometic amounts, the exact molar composition of the polyurethane formed is not
disclosed. However, in view of the similar stiffness and softening properties associated with Lambert’s
polyurethane polymer, we conclude that the molar composition of Lambert’s hydrophobic polyurethane
is substantially similar to that required by appellants’ claims. See Titanium Metals Corp. v. Banner, 778
F.2d 775, 782, 227 USPQ 773, 779 (Fed. Cir. 1985). In the absence of evidence by appellants on this
record to prove that Lambert’s tube does not inherently possess the characteristics or properties attributed
to the claimed medical tube, we find that Lambert’s polyurethane medical tube is the same or substantially
similar to that defined by appellant’s claims. We, therefore, affirm the rejection of claims 12, 13, 16-22
and 25-30 under 35 U.S.C. § 103.
New Ground of Rejection
Under the provisions of 37 CFR § 1.196(b), we make the following new ground of rejection.
Claims 12-31 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. The phrase “A
medical tube for insertion into a mammal made of a hydrophobic non-halogenated polyurethane” is
ambiguous for it is reasonable for a person having ordinary skill in the art to misconstrue the sentence as
meaning that the mammal is made of polyurethane. Also, the phrase “comprising a tube of isocyanate
component” is ambiguous because it is reasonable for a person having ordinary skill in the art to construe
the isocyanate component as being a tube, which it is not.
Other Matters
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