Appeal No. 97-1871
Application 08/325,847
range recited in claim 1, i.e., that one skilled in the art could derive the claimed range from appellant's
disclosure. Vas-Cath Inc., 935 F.2d at 1565, 19 USPQ2d at 1119. The end points of the range are
simply two values calculated from two examples, and we find no disclosure in the application as filed
that the ratio of the tip radius to the needle diameter should fall between those points, or even that the
radius of the tip has or should have any relationship whatsoever to the diameter of the needle. There is,
therefore, nothing in the disclosure which describes the claimed range limitations "so clearly that persons
of ordinary skill in the art will recognize from the disclosure that appellants invented processes including
those limitations." In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976).
We reach the same conclusion with regard to the ranges of the ratio of the particle diameter of
the second medium to the diameter of the surgical needle recited in claims 4 and 30. Here again, while
the end points of these ranges can be calculated by picking and choosing various particle diameters and
needle diameters disclosed in the specification (as demonstrated on page 18 of the brief), the
application as filed does not convey that appellant was in possession of the claimed ranges as of the
filing date of his application.
Rejection (I) will accordingly be sustained.
Rejections (II)(a) to (g)
On page 3 of the brief, appellant groups the claims on appeal into five groups, of which Group
1 consists of claims 1, 3, 8 to 12, 16 to 18, 20, 21, 31 and 32. Accordingly, we select claim 1 from
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