Appeal No. 2003-1725
Application No. 09/357,645 Page 22
Appellants argue for the patentability of claims 24, 26 and
27 solely on the basis that independent claim 24 limits the
occluder to only one occluding member, which is not taught by
Payne since Payne employs a pair of occluding members. See,
e.g., pages 18 and 19 of the reply brief. We are not persuaded
by that argument.
As correctly noted by the examiner, the claim language,
including the transitional phrase “comprising,” leaves
representative claim 24 open to additional occluding members.
It is well settled that the term "comprising" in a claim permits
inclusion of other non-recited materials. In re Baxter, 656 F.2d
679, 686, 210 USPQ 795, 802 (CCPA 1981). Here, appellants are
seemingly of the opinion that the term “one occluding member”
nevertheless limits the claimed device to only one occluding
member. We are not inclined to read that additional limitation
of “only” into representative claim 24. On this record, it
follows that we will sustain the examiner’s § 103(a) rejection of
claims 24, 26 and 27.
Claim 32
Claim 32 requires that the occluding member “is most
resistant to forces applied from the tube to change the occluding
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