Appeal No. 1999-0925
Application No. 08/735,916
apparatus does not exist in the market place
since the cement bodies only are present after
the implant has been placed into the patient and
the cement, after a predetermined time, has
cured into a pluralities [sic] of discreet [sic:
discrete] bodies.[ ] 2
The examiner further states (id., page 6):
As argued previously, the "cement bodies"
as claimed do not exist until the device has
been implanted and the connection to the patient
is permanent. If we choose to allow appellant’s
coverage to include the cement body [sic:
bodies] then appellant will also have to
positively claim the patient, since the bodies
only exist as an entity between the recesses
formed in the implant and the bone of the
patient. Appellant is prohibited in claiming
the combination of the implant and the body
under 35 U.S.C.[§] 101.
We do not consider this rejection to be well taken. The
test for compliance with the second paragraph of § 112 is
"whether a claim reasonably apprises those of skill in the art
of its scope," In re Warmerdam, 33 F.3d 1354, 1361, 31 USPQ2d
1754, 1759 (Fed. Cir. 1994), and we have no doubt that one of
ordinary skill would have no difficulty in understanding the
scope of the instant claims. The second paragraph of § 112
2Since allowed claims 41 to 43 also recite the bodies of
cement, it is not apparent why they were not included in this
rejection.
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