Appeal No. 95-1827
Application 07/816,157
Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d 1127, 1132 (Fed. Cir.
1995). The electrically conductive medium is positively
recited in appealed claim 23. As noted above in In re Wilder,
all positively recited limitations must be given effect. The
Rishoi and Masham cases cited by the examiner are
distinguishable by the fact situation in this appeal. These
cases dealt with the claimed limitation of a material to be
worked upon in combination with an apparatus. Here the5
“electrically conductive medium” is an essential part of the
operating apparatus and is not the material to be worked upon.
The material that is being worked upon is the object to be
sterilized, e.g., the catheter including a biofilm that
requires sterilization. Therefore the examiner’s finding that
the “electrically conductive medium” of appealed claim 23 is
the “material being worked upon” (Paper No. 13, sentence
bridging pages 2-3) is in error.
The electrically conductive medium required in the
apparatus of appealed claim 23 allows the electric field to
have an effect upon the biofilm without the biofilm contacting
See In re Rishoi, 197 F.2d at 345, 94 USPQ at 73.5
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