Appeal No. 1999-2646
Application No. 08/794,398
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), cert. denied, 465 U.S. 1026 (1984).
The appellants’ position that the subject matter recited
in claim 1 is not anticipated by Duran ‘021 (see pages 4
through 11 in the main brief and pages 3 through 5 in the
reply brief) essentially rests on two lines of argument
focusing on the “resorbable” and “consisting essentially of”
limitations in the claim. The first argument is that Duran
‘021 discloses an annuloplasty ring which is permanent as
evidenced by Duran’s teaching of permanent implantation,
rather than one which is “not permanent in nature since it is
resorbed over time” (main brief, page 6). The second argument
is that Duran ‘021 requires the annuloplasty ring disclosed
therein to have a cloth covering which is both (1)
inconsistent with the “resorbable” nature of the claimed ring
and (2) excluded by the “consisting essentially of”
transitional phrase in claim 1. Neither of these arguments is
persuasive.
Turning first to the “consisting essentially of”
limitation, it is well settled that this transitional phrase
renders a claim open only for the inclusion of unspecified
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