Ex parte KHAN et al. - Page 3




          Appeal No. 1997-0926                                                        
          Application No. 08/552,045                                                  


          1991                                                                        
          (Valentine)                                                                 
          Scarpelli et al.         5,043,161                     Aug. 27,             
          1991                                                                        
          (Scarpelli)                                                                 
          Soper                    5,071,706                Dec. 10,                  
          1991                                                                        
                   The following rejections are before us for review:                
               (1) claims 1 through 3 stand rejected under 35 U.S.C. §                
          103 as being unpatentable over Yoshida in view of Valentine;                


               (2) claims 4 through 9 stand rejected under 35 U.S.C.                  
          § 103 as being unpatentable over Yoshida in view of Valentine,              
          as applied to claim 1, and further in view of Hyans;2                       
               (3) claims 1 through 3 stand rejected under 35 U.S.C.                  
          § 103 as being unpatentable over Wong in view of Soper and                  
          Scarpelli; and                                                              
               (4) claims 4 through 9 stand rejected under 35 U.S.C. §                
          103 as being unpatentable over Wong in view of Soper and                    
          Scarpelli, as applied to claim 1, and further in view of                    
          Hyans.                                                                      


               In that claim 7 is directed to a lubricant per se and is broader than2                                                                     
          claim 1, which is directed to the combination of a medical device coated with
          the lubricant, it is not clear why it was not included in Rejection (1).    
                                          3                                           





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