Appeal No. 1999-2646
Application No. 08/794,398
III. The 35 U.S.C. § 102(b) rejection of claim 14 as being
anticipated by Duran ‘021
The arguments advanced by the appellants against the 35
U.S.C. § 102(b) rejection of method claim 14 as being
anticipated by Duran ‘021 are the same as those advanced in
connection with claim 1, and are similarly unpersuasive. The
prosthesis providing step in claim 14 finds response in
Duran’s provision of the reabsorbable rings or stents 1 as
they exist prior to being covered with cloth for implantation,
and the prosthesis implanting step in claim 14 finds response
in Duran’s implantation step even though the reabsorbable
rings or stents 1 are covered with cloth at this time. The
“comprising” transitional phrase in claim 14 leaves the claim
open for the inclusion of unspecified elements. See PPG
Industries Inc. v. Guardian Industries Corp., 156 F.3d 1351,
1354, 48 USPQ2d 1351, 1353-54 (Fed. Cir. 1998); Ex parte
Davis, supra. Among such elements would be the step of
covering the prosthesis provided in the first step of the
claim before implanting it in the second step.
Thus, the appellants’ position that the subject matter
recited in claim 14 distinguishes over Duran ‘021 is
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