Appeal 2006-3319
Application 10/366,585
the mitral valve therapy device (cinching device 106) within the coronary
sinus of the patient adjacent to the mitral valve annulus (Cohn ¶¶ 59-63) and
evaluating effectiveness of the device (Cohn ¶¶ 51 and 63). The only
limitation of independent claims 1 and 33 argued by Appellants to be
lacking in Cohn is the step of assessing arterial perfusion of the heart.
The Examiner points to Cohn's disclosure of using echocardiography
to visualize the procedure and determine the efficacy of the procedure (Cohn
¶51 and 63), noting that "an echocardiogram can provide blood vessel
information and that would inform the doctor or surgeon of perfusion in the
vessel," and determines "it is inherent that arterial perfusion is assessed
because it is critical that the doctor or surgeon monitors blood flow because
with no arterial perfusion the patient would likely die" (Answer 4).
Appellants point out that claim 1 recites separate steps of evaluating
effectiveness of the device and assessing arterial perfusion and that Cohn
uses the echocardiogram to evaluate the effectiveness of the device and
contends that the Examiner cannot show that an echocardiogram would
necessarily assess perfusion and has therefore failed to demonstrate that
Cohn inherently meets this limitation (Appeal Br. 7).
In light of the contentions of the Examiner and Appellants, the sole
issue presented in the appeal of this rejection is whether Cohn's disclosed
use of echocardiography inherently assesses arterial perfusion of the heart.
We reach the conclusion that it does not.
Under principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the missing descriptive
matter is necessarily present in the thing described in the reference, and that
it would be so recognized by persons of ordinary skill. Continental Can Co.
4
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