Appeal 2007-2812
Application 10/337,236
Claim 23 depends on claim 1, but further recites that “the
magnetically responsive element is configured to align the distal end of the
guidewire with the direction of a magnetic field that is applied from an
external source magnet.”
The Examiner contends that “Kuntz discloses a guidewire [catheter]
21 wherein the magnetically responsive element 27 comprises a permanent
magnetic element that is capable of aligning the distal end of the guidewire
21 with the direction of a magnetic field that is applied from an external
source magnet (see column 5/lines 15-22)” (Final Office Action 6; FF 22).
Appellants contend that “Kuntz teaches a magnetic tip being attracted
towards a magnet. There is every indication that the Kuntz device would not
be capable of being aligned in directions other than towards the magnet
source, because the Kuntz device is intended to be attracted towards a
magnet” (Br. 13) (emphasis added). We do not find the argument
persuasive. The statement that Kuntz’s device “would not be capable of
being aligned in directions other than towards the magnet source” is not
relevant to the patentability of claim 23 because such limitation is not recited
in the claim. Claim 23 recites that the magnetic element aligns with the
guidewire with the direction of the magnetic field, not “aligned in directions
other than towards the magnetic source” as Appellants assert (Br. 13).
Appellants also contend that “there is no indication that the Kuntz
magnet would inherently be capable of aligning with a magnetic field
applied by an external source as required by the claims. The mere fact that a
certain thing might result from a given set of circumstances is not sufficient
to establish inherency” (Br. 14).
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