Appeal No. 1999-0610 Page 15
Application No. 08/601,186
missing descriptive matter is necessarily present in the thing
described in the
reference, and that it would be so recognized by persons of
ordinary skill. Continental Can Co. v. Monsanto Co., 948 F.2d
1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
The examiner's sole basis for the determination that the
coating taught by Eury is inherently "lubricious" is that
Eury's coating has incorporated therein a heparin complex and
that appellants (specification, page 6) specifically disclose
cross-linked heparin as a polysaccharide particularly suitable
for the invention (answer, page 10).
We do not find this reasoning sufficient to reasonably
support the determination that the allegedly inherent
characteristic of lubriciousness of the coating necessarily
flows from the teachings of the applied prior art.
Specifically, we note that the coating disclosed by Eury is
not, as the examiner suggests, the structural equivalent of
the cross-linked heparin polymer disclosed by the appellants.
First, we note that there is no indication in Eury that the
heparin from which the HPTC complex is formed is cross-linked,
as is the polymer disclosed by the appellants. Secondly, even
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