Appeal No. 97-1313
Application 07/931,695
its catheter 56 in place. While the Frisbie sealing ring-cap structure and appellants' stop ring may be
"alternative mechanisms for preventing the distal movement of the trapping member (balloon) relative to
the guide catheter," as the examiner argues on page 10 of the answer, the fact that two structures
perform the same function and may be substituted for one another is not determinative of equivalence
under § 112, sixth paragraph. Chiuminatta Concrete, 145 F.3d at 1310,
46 USPQ2d at 1757. In our view, Frisbie's sealing ring-cap arrangement is not merely an insubstantial
change from appellants' disclosed stop ring, but is a quite different structural arrangement which
operates in a different manner.
Accordingly, since the structure disclosed by Frisbie is not, under the sixth paragraph of
§ 112, the same as or an equivalent of the structure disclosed by appellants as the "means for
preventing" recited in claim 1, Frisbie does not anticipate claim 1 under § 102(b). Also, since there is
no evidence that such structure disclosed by appellants or its equivalent would have been obvious in
view of Frisbie, the rejection of claim 1 under § 103 will likewise not be sustained. It further follows
that the rejection of dependent claims 6, 21, 24 and 25 under §§ 102(b) or 103 will not be sustained.
Rejection (4)
This rejection will not be sustained for the same reasons as rejection (3), supra.
Rejections (1) and (2)
In these rejections, the examiner acknowledged that the rejected claims differ from the claims of
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