Appeal No. 97-1313
Application 07/931,695
On page 8 of the answer, the examiner states the basis of rejection (6) as:
Pollack shows guide catheter 11, shaft 22, trapping member (balloon 21) which is
inherently capable of trapping a guide wire inserted through the guide catheter and
means 40 for preventing the distal end of the trapping member 21 from extending
beyond the distal end of the guide catheter (through openings 16, 41, 48 or 83 for
example). As to claim 7, member 40 of Pollack is a stop ring since it abuts the
proximal end of the guide catheter at 30.
In considering appellants' arguments concerning this rejection on pages 50 to 54 of their brief,
we note that appellants present arguments on pages 51 to 52 concerning obviousness under § 103, but
not as to anticipation under § 102(b), even though rejection (6) is based on both of these grounds.
A prior art reference anticipates if it "disclose[s] every limitation of the claimed invention, either
explicitly or inherently." In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir.
1997). Appellants first argue (brief, pages 52 to 53) that Pollack does not disclose a guide wire.
However, as the examiner points out at page 11 of the answer, a guide wire is not part of the claimed
combination. Claim 1 recites only a combination "for use with a guide wire", and "[i]t is well settled that
the recitation of a new intended use for an old product does not make a claim to that old product
patentable." In re Schreiber, id.
Appellants further argue that Pollack discloses a cannula with a closed distal tip, so that a guide
wire or interventional catheter could not pass therethrough. This argument is not well
taken because, as the examiner notes (answer, page 12), Pollack discloses in Figs. 8 to 11
embodiments having a distal opening 48, 41 or 83 through which a guide wire or catheter could pass.
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