Appeal No. 1999-0925
Application No. 08/735,916
in applying the prior art, the examiner appears to have
disregarded the cement bodies as recited in the claims, but
such an approach is incorrect, for as stated in In re Glass,
472 F.2d 1388, 1392, 176 USPQ 489, 491 (CCPA 1973), "[i]t is
error to ignore specific limitations distinguishing over the
references." See also In re Wilson, 424 F.2d 1382, 1385, 165
USPQ 494, 496 (CCPA 1970)(a term in a claim cannot be ignored
because it is indefinite).
Turning to the Mikhail and Hodorek references, while each
does disclose an implant which is cemented to bone and
contains recesses (e.g., Mikhail at 166, Hodorek at 22),
neither discloses a plurality of bodies of cement as called
for by independent claims 28, 39 and 40. Thus, in Mikhail
there is only one recess 28, 32 in the bone, not a plurality.
Hodorek does not disclose whether any recesses are formed in
the bone, and even though posts 16 would presumably be located
in one or more recesses, it would be merely speculative as to
what form such recess(es) would take. Moreover, the 4
configurations of the recesses in the bone and in the implant
4Appellant asserts that the posts would all be located
in one recess, as shown in Exhibit B of his brief.
7
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