Appeal 2007-0850
Application 10/733,292
end (in the embodiment in which the graft 13 is shorter than the wire helix as
described in col. 3, lines 29-31)” (Answer 5). Based on this disclosure, the
Examiner concludes (id. at 5-6):
The apices are inherently capable of being located across a
lumen of a second vessel since the prosthesis can be deployed
in the first blood vessel to a position adjacent the intersection
point of a second blood vessel such that the apices are located
across a lumen of the second vessel. Alternatively, it would
have been obvious that the apices are capable of being located
across a lumen of a second vessel for this reason.
Appellants argue that the Examiner has not established that Cragg
inherently discloses the device recited in claims 21-36 (Br. 18).
When a reference is silent regarding a particular element, an examiner
may refer to extrinsic evidence to demonstrate that the asserted element is
inherently present in the reference’s disclosure. Continental Can Co. v.
Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir.
1991) (“[The] gap in the reference may be filled with recourse to extrinsic
evidence. Such evidence must make 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.”)
However, as stated in In re Oelrich, 666 F.2d 578, 581, 212 USPQ
323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)) (emphasis in original): “Inherency . . . may
not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”
We agree with Appellants that the Examiner has not established that
Cragg meets the limitation requiring the wire apices to be capable of
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