Appeal No. 97-1313
Application 07/931,695
(4) Claims 16, 17 and 22, unpatentable over Frisbie under 35 U.S.C. § 103;
(5) Claims 2 to 5, 20 and 23, unpatentable over Frisbie in view of Saab, under 35 U.S.C. § 103;
(6) Claims 1 to 3, 7, 8, 10, 11 and 16, unpatentable over Pollack under 35 U.S.C.§ 102(b) or
§ 103;
(7) Claims 9, 12 to 14 and 17 to 19, unpatentable over Pollack under 35 U.S.C. § 103.
Rejection (3)
We will for convenience first consider rejection (3). The examiner sets forth the basis of this
rejection on pages 6 and 7 of the answer as:
Frisbie et al. show guide catheter 52, elongate shaft 56, trapping member (balloon 57)
and means 34, 37 for preventing the distal end of the trapping member 57 from
extending beyond the distal end of the guide catheter when inserted therein. Balloon 57
would be prevented from extending beyond the distal end of the guide catheter when
the end cap 37 is tightened while the balloon is located inside of the guide catheter.
Note that the apparatus rather than the method of use is claimed in these claims.
Alternatively, it would have been obvious that balloon 57 would be prevented from
extending beyond the distal end of the guide catheter when the end cap 37 is tightened
while the balloon is located inside of the guide catheter since the seal 34 would
frictionally fix the catheter 56 relative to the guide catheter 52. It should be noted that
Frisbie et al. indicates that tightening the end cap 37 around a guide wire prevents
movement of the guide wire relative to the guide catheter (col. 3, lines 58-59). It is thus
apparent that lightening the end cap 37 around balloon catheter 56 likewise prevents
movement of the balloon catheter 56 relative to the guide catheter.
Appellants, citing In re Donaldson Co., Inc., 16 F.3d 1189, 1194-95, 29 USPQ2d 1845,
1850 (Fed. Cir. 1994), and MPEP § 2181, argue that the end cap 37 of Frisbie, identified by the
examiner as corresponding to the "means for preventing" recited in claim 1, is not structure which is the
3
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