Ex parte PALERMO - Page 11




                 Appeal No. 2000-0448                                                                                                                   
                 Application No. 08/605,765                                                                                                             


                 9)  the electrical resistance of tissue at the target site.3                                                                                                                                  
                 Guglielmi does not expressly disclose this limitation, but, as                                                                         
                 pointed out by the examiner, does disclose that coil 28 or 56                                                                          
                 is made of platinum (col. 7, line 57; col. 9, line 17), which                                                                          
                 is one of the materials of which appellant’s coil may be made                                                                          
                 (page 13, line 28).  It therefore appears that the coil of                                                                             
                 Guglielmi would inherently meet the limitations of these                                                                               
                 claims, appellant not having defined the scope of                                                                                      
                 "substantially less" or "slightly less", and their rejection                                                                           
                 will be sustained.                                                                                                                     
                          Claim 20 reads:                                                                                                               
                                            20.  A method for occluding a body lumen                                                                    
                                   comprising:                                                                                                          
                                            positioning at least one electrically                                                                       
                                   conductive, vaso-occlusive element at a target                                                                       
                                   site within the body lumen; and                                                                                      
                                            applying sufficient high frequency                                                                          
                                   electrical energy to the vaso-occlusive element                                                                      
                                   to generate a thermal reaction at the target                                                                         
                                   site, while said electrically conductive, vaso-                                                                      
                                   occlusive element remains in place at the target                                                                     
                                   site and wherein the thermal reaction induces                                                                        
                                   thrombosis to hold the element in place.                                                                             



                          3The expression "substantially equal to" does not appear                                                                      
                 to have antecedent basis in the specification.  37 CFR §                                                                               
                 1.75(d)(1).                                                                                                                            
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