Appeal No. 2000-0448
Application No. 08/605,765
while it is "temporarily held in place by the spasm or
narrowing of the vessel." Thus, when claim 19 is read in
light of the disclosure, this inconsistency between the claim
and the disclosure renders the claim indefinite. Cf. In re
Cohn, 438 F.2d 989, 993, 169 USPQ 95, 98 (CCPA 1971).
Claim 26 contains similar recitations and is indefinite
for the same reason as claim 19. 1
Rejection Under 35 U.S.C. § 103(a)
For the reasons stated above, we would have to engage in
considerable speculation as to the meaning and scope of claims
19 and 26 in order to evaluate their rejection under § 103(a).
Therefore, in accordance with In re Steele, 305 F.2d 859, 862,
134 USPQ 292, 295 (CCPA 1962), the rejection of claims 19 and
26 under § 103(a) will not be sustained, pro forma. This
should not be taken as an indication, however, that these
claims would necessarily be patentable over prior art if the §
112, second paragraph, rejection (supra) were overcome.
1We speculate that appellant may have intended the step of
"releasing" to mean releasing the vaso-occlusive element from
some other apparatus (e.g., as disclosed at page 16, lines 32
to 34), but, unlike claim 22, no such apparatus is recited in
claims 19 and 26.
5
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