Appeal 2007-0850
Application 10/733,292
Examiner concludes that “the Piplani et al. wire structure 126 inherently
extends sufficiently far beyond the end of the graft to extend completely
across a lumen of the second vessel, as claimed, since it extends farther
beyond the end of the graft than appellant's invention” (id.).
As discussed supra, inherency may not be based on probability or
possibility. In re Oelrich, 666 F.2d at 581, 212 USPQ at 326. In our view,
the Examiner's reasoning does not adequately support a case of inherency.
For example, the fact that Piplani’s wire structure is made “in a manner
similar” to Lazarus’ wire structure (Answer 7, see also Piplani, col. 5, ll. 34-
40), does not mean that Piplani’s structure will necessarily have the same
dimensions as Lazarus’ structure.
However, our review of Piplani leads us to conclude that the reference
anticipates many of the appealed claims, but for reasons different than those
advanced by the Examiner. We therefore vacate the Examiner’s rejections
based on Piplani and enter the new rejections set out below.
5. ANTICIPATION BY PIPLANI
Under the provisions of 37 CFR § 41.50(b), we enter the following
new ground of rejection: claims 12-16, 19, 20, 22, and 24-36 are rejected
under 35 U.S.C. § 102(e) as anticipated by Piplani.
Piplani describes a tubular bifurcated intraluminal graft prosthesis,
having first and second ends (Piplani, Figure 4). The device can be placed
in the lumen of a first vessel that intersects a second vessel (see id. at
Figures 13 through 19). The device’s main body can be from five to thirty
centimeters long, with a diameter of from twelve to thirty millimeters (id. at
col. 5, ll. 16-22).
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: September 9, 2013