Appeal No. 2000-0920
Application No. 08/829,034
alternative, as being unpatentable over Holt, will also be
sustained. See In re Young, 927 F.2d 588, 590, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991); In re Nielson, 816 F.2d 1567, 1572,
2 USPQ2d 1525, 1528 (Fed. Cir. 1987); In re Wood, 582 F.2d 638,
642, 199 USPQ 137, 140 (CCPA 1978).
We now take up for consideration claims 11-17, which are
directed to “[a] bone implant fabricated from an FDA approved
cermet.” As noted supra in our discussion of the standing
35 U.S.C. § 112, first paragraph, rejection of claims 11-18, we
do not consider that appellant’s original disclosure provides
descriptive support for a cermet that is FDA approved.
Nevertheless, it is improper to ignore this positive claim
limitation in addressing the patentability of claim 11 in light
of Holt.4 For reasons stated infra in our new rejection entered
under the provisions of 37 CFR § 1.196(b), we have encountered
substantial difficulty in understanding precisely what is meant
by the terminology “fabricated from an FDA approved cermet” as
called for in claim 11. While we might speculate as to what is
4See Ex parte Pearson, 230 USPQ 711, 712 (1985), aff'd.
mem., 795 F.2d 1017 (Fed. Cir. 1986) (“Even though the above
quoted expressions are held by us to introduce new matter into
the claims, nevertheless, they cannot be ignored, but rather,
must be considered and given weight when evaluating the claims so
limited with regard to obviousness over art.”).
11
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