Ex Parte Ferry et al - Page 4

                Appeal 2007-2812                                                                             
                Application 10/337,236                                                                       
                Sys., Inc., 916 F.2d 683, 688, 16 USPQ2d 1436, 1441 (Fed. Cir. 1990)                         
                (quoting Perkin-Elmer Corp. v. Computervision Corp., 732 F.2d 888, 896,                      
                221 USPQ 669, 675 (Fed. Cir. [1984]), cert. denied, 469 U.S. 857 (1984)).                    
                “Although no ‘litmus test’ exists as to what effect should be accorded to                    
                words contained in a preamble, review of a patent in its entirety should be                  
                made to determine whether the inventors intended such language to                            
                represent an additional structural limitation or mere introductory language.”                
                In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed. Cir. 1994).                    
                      In this case, the Specification indicates that “magnetically navigable                 
                guidewires have been developed which can be controlled with the                              
                application of an external magnetic field” (Spec. 1: [0002]).  The navigation                
                is enabled by having a “magnetically response element” at the guidewire tip                  
                that is deflected in the desired direction by the externally applied magnetic                
                field (Spec. 6: [0022]).  The guidewire is described by the Specification as                 
                being “sufficiently stiff that it can be advanced in the selected direction by               
                pushing [its] . . . proximal end” (Spec. 4: [0017]), but it also must be flexible            
                enough that its direction can be displaced (“deflection angle”) by the                       
                external magnetic field (see Spec 6: [0025]).  Thus, the phrase “magnetically                
                navigable medical guidewire” would be understood by persons of skill in the                  
                art, in the light of the Specification, to mean that the guidewire comprises a               
                “magnetically responsive element” which enables it to be directed                            
                (“navigable”) to a desired site in a blood vessel (see Answer 4) and that it is              
                also be flexible enough to be steered through blood vessels.  The                            
                “magnetically responsive element” is explicitly recited in the claim.  With                  
                respect to the flexibility requirement, we do not interpret the phrase to                    



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