Appeal 2006-3381
Application 10/162,317
Appellants contend that the claimed subject matter is not anticipated
by Brackett, and is not rendered obvious by Brackett, either alone or in
combination with Focht or Stein. More specifically, Appellants contend that
key elements of the claimed invention, especially with regard to shaping the
tissue specimen, are missing from the Brackett reference, and missing from
Focht and Stein, and the disclosures cannot properly be combined because
the Examiner has failed to establish an adequate reason to combine. The
Examiner contends that the venerable Brackett patent contains all of the
claimed elements for most of the claims, and alone or in combination with
Focht or Stein renders the other claims obvious.
We affirm-in-part.
ISSUE
The issue is whether Appellants have shown that the Examiner erred
in rejecting the claims under 35 U.S.C. §§ 102 (b) and 103(a). The issue
turns on whether the elements in the Brackett reference anticipate the
claims’ limitations, or render them obvious alone or in combination with
Focht or Stein. Particular focus is on the limitation, “in which said
membrane is sufficiently pliable in response to pressure to be capable of
being operated upon to reach said window at one or more locations to shape
the tissue specimen upon said window.”
FINDINGS OF FACT
A. With regard to the rejection of claims 23, 26, 33, 41, 46, 48, 49, 53-57
and 60-63 under 35 U.S.C. § 102(b) as being anticipated by Brackett:
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