Appeal 2007-0850
Application 10/733,292
define a context in which the invention operates.” Boehringer Ingelheim
Vetmedica v. Schering-Plough Corp., 320 F.3d 1339, 1345, 65 USPQ2d
1961, 1965 (Fed. Cir. 2003). Thus, an apparatus capable of performing an
intended use will anticipate an apparatus claim, even if the prior art does not
disclose that the apparatus was actually put to the intended use recited in the
claim. See In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-
32 (Fed. Cir. 1997).
We therefore interpret claims 12 and 20 to encompass any device
having wire apices of sufficient length such that the apices are capable of
extending across the lumen of a connecting vessel (and meeting the other
claim limitations).
Claims 12 and 20 also limit the extending apical wire structure to one
that does not occlude the lumen of the second vessel. During prosecution,
the Examiner rejected the claims as indefinite because it was unclear
whether “occlude” requires total occlusion or encompasses partial occlusion.
Appellants argued that “[o]cclude means to shut or close. . . . Partially
occlude means partially shut or partially block. Whether the structures
defined by claim 20 partially shut or partially block the lumen of the second
vessel is irrelevant because that is not what the applicant claims.”
(Amendment received July 6, 2005, at 10).
Positions taken during prosecution can limit the scope of the claims.
See Renishaw plc v. Marposs Societa per Azioni, 158 F.3d 1243, 1249 n.3,
48 USPQ2d 1117, 1121 n.3 (Fed. Cir. 1998) (“Likewise, any interpretation
that is provided or disavowed in the prosecution history also shapes the
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