Appeal No. 2001-0599 Page 5
Application No. 08/555,198
materials and is therefore applicable to a wider variety of implantable medical
devices. Id. Appellant concludes that “the requirement for ionic bonding is a key
structural difference between Sakamoto et al. and the current invention. This is
all that is required to negate a § 102(b) reference.” Id.
This argument is not persuasive. Whether the prior art disclosure is more
limited than the instant claims does not make the claims patentable over the prior
art. “It is well settled that a generic claim cannot be allowed to an applicant if the
prior art discloses a species falling within the claimed genus.” In re Slayter, 276
F.2d 408, 411, 125 USPQ 345, 347 (CCPA 1960). The instantly claimed
invention—that is, the invention defined by the claims—does not exclude
products coated with antiseptics bound via ionic bonding. Therefore, the claims
contain no limitation that distinguishes them from prior art. The claims read on,
and are anticipated by, the antiseptic-coated urethral catheters disclosed by
Sakamoto. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983) (“The law of anticipation does not require that the
reference ‘teach’ what the subject [application] teaches. Assuming that a
reference is properly ‘prior art,’ it is only necessary that the claims under attack
. . . ‘read on’ something disclosed in the reference, i.e., all limitations of the claim
are found in the reference.”).
The examiner also rejected claims 23-26, 30, 35, and 36 under 35 U.S.C.
§ 102(b) as anticipated by Lee. Since we have concluded that all of these claims
are anticipated by Sakamoto, we have no need to address whether these claims
are also anticipated by Lee.
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