Ex Parte Mahendran et al - Page 9



           1    Pfizer, Inc. v. Apotex, Inc., 380 F.3d 1348, 82 USPQ2d 1321 (Fed. Cir.                         
           2    2007).                                                                                         
           3          E.  Discussion                                                                           
           4                                     Anticipation                                                  
           5          The Examiner’s rejection of the claims for anticipation under 35                         
           6    U.S.C. § 102(b) is foreclosed by the Federal Circuit’s decision in Atofina v.                  
           7    Great Lakes Chemical Corp., 441 F.3d 991, 78 USPQ2d 1417 (Fed. Cir.                            
           8    2006).                                                                                         
           9          Just as the ranges in Atofina were not anticipated by the prior art, so it               
          10    is here.                                                                                       
          11          Appellants’ collective ranges of (1) braided support outside diameter                    
          12    of 1.5 mm to 2.5 mm and (2) porous substance wall thickness of between                         
          13    0.05 mm and 0.3 mm are not anticipated by Mahendran’s collective ranges                        
          14    of (A) braided support outside diameter of about 0.6 mm to 2.5 mm and                          
          15    (B) porous substance wall thickness of between 0.01 mm to 0.1 mm even                          
          16    though both of appellants’ ranges overlap those described by Mahendran.                        
          17          No embodiment described by Mahendran has been shown to include                           
          18    all of the limitation of the claims on appeal.                                                 
          19          At the time the Examiner entered the Examiner’s Answer in July of                        
          20    2006, the Examiner may not have known of Atofina which was decided in                          
          21    March of 2006, with a petition for rehearing en banc being denied in May of                    
          22    2006.  We would be surprised that if the Examiner had known of Atofina,                        
          23    the anticipation rejection would have been maintained on appeal.                               
          24          Because the anticipation rejection is essentially controlled by the                      
          25    rationale of  Atofina, we now reverse that rejection.                                          



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