Appeal 2006-2249
Application 10/429,172
using a hooked wire 55 to engage hole 56 and pulling the hooked wire 55
proximally to collapse the stent 10 (Gaber 8:11-17). From this disclosure,
Gaber discloses a “recapture mechanism” as claimed. Regarding the
functional recitation that modifies the claim 1 “recapture mechanism” (i.e.,
“adapted to assist the recapture of at least a portion of the device into the
catheter”), Gaber’s disclosure of a “recapture mechanism”, that collapses
stent 10 for removal from the vessel, indicates that Gaber’s stent 10 is
inherently functionally capable of being recaptured “into a catheter.” In re
Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
Accordingly, Gaber satisfies Appellants’ second argued distinction.
For the above reasons, we affirm the Examiner’s § 102(b) rejection
over Gaber of argued claim 1 and non-argued claims 2-8.
35 U.S.C. § 112, 1ST PARAGRAPH LACK OF ENABLEMENT
REJECTION
The Examiner contends that claims 5 and 6 lack enablement because
the “disclosure provides to [sic too] many variation[s] [for the selection of
the ‘first surface’, ‘second surface’ and ‘longitudinal axis of the anchor’ as
recited by claims 5 and 6] such that undue experimentation would be
necessary to make and use the [claimed] invention” (Answer 5).
We cannot sustain the Examiner’s § 112, 1st paragraph, rejection of
claims 5 and 6 as lacking enablement.
The Examiner’s rejection is premised on his determination that the
language of claims 5 and 6 permits too many variations such that undue
experimentation would be required to make or use the invention. However,
the Specification, not the claims, discloses what the invention is and how to
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