Appeal 2007-0850
Application 10/733,292
graft such that the apices would be capable of extending across the lumen of
an intersecting vessel, including a renal artery. Therefore, Piplani’s device
reasonably appears to meet the structural limitations of claims 12-16, 19, 20,
22, and 24-36.
As stated in In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 433
(CCPA 1977):
[W]here the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing novelty in the
claimed subject matter may, in fact, be an inherent
characteristic of the prior art, it possesses the authority to
require the applicant to prove that the subject matter shown to
be in the prior art does not possess the characteristic relied on.
In reviewing Appellants’ arguments, we do not find any evidence
demonstrating that this conclusion is not reasonable. On the current record,
Appellants have not met their burden under In re Best of establishing a
difference between the claims and prior art.
Appellants urge that Piplani teaches away from deploying the graft in
the manner recited in claim 12 and 20 (Br. 9). However, as discussed supra,
a prior art device capable of performing the intended use will anticipate an
apparatus claim, even if the device is not actually used in the manner recited
in the claim. In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431
(Fed. Cir. 1997). Moreover, “the question whether a reference ‘teaches
away’ from the invention is inapplicable to an anticipation analysis.”
Celeritas Techs. Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354, 1361, 47
USPQ2d 1516, 1522 (Fed. Cir. 1998) (citation omitted).
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