Appeal No. 1998-2827
Application 08/614,494
we will consider the terminology “cylinder” as encompassing
any elongated shape having a generally curved sidewall, which
may or may not also include surface portions comprising
threads, channels, diametrical holes, tapered portions, etc.
The Anticipation Rejection
The only limitation of claim 9 argued by appellant as
distinguishing over the wood screw of Sparkes is the
requirement of claim 9 that the claimed device is a cylinder. 4
Appellant contends that “The claim language specifically
excludes compound devices such as cylinders joined with
polyhedrons or truncated cones” (corrected brief, page 8), and
that “The wood screws shown by Sparkes are compound devices
which cannot be described as cylinders in that they consist of
tapered bodies joined to hexagonal or truncated-cone heads”
4 Appellant does not argue the preamble recitation “for
implantation in bone tissue” as a difference over Sparkes and
thus it will be assumed that Sparkes meets this preamble
recitation in the sense that it is at least fully capable of
the recited use. Cf. In re Baxter Travenol Labs, 952 F.2d
388, 391, 21 USPQ2d 1281, 1285 (Fed. Cir. 1991) (“It is not
the function of this court to examine the claims in greater
detail than argued by an appellant, looking for nonobvious
distinctions over the prior art.”); In re Wiseman, 596 F.2d
1019, 1022, 201 USPQ 658, 661 (CCPA 1979) (arguments must
first be presented to the Board).
6
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