Appeal No. 2002-1671 Page 9
Application No. 08/993,985
The obviousness rejection based on Chaikof and Berg
We sustain the rejection of claims 1 to 4, 6, 8 to 16, 56, 59 to 62 and 67 under
35 U.S.C. § 103 as being unpatentable over Chaikof in view of Berg but not the
rejection of claims 19 to 21, 36, 37, 39 to 49 and 51 to 55, 57, 58 and 63 to 66.
In the rejection of claims 1 to 4, 6, 8 to 16, 19 to 21, 36, 37, 39 to 49 and 51 to
67 (answer, pp. 3-4), the examiner (1) set forth the pertinent teachings of Chaikof and
Berg; (2) ascertained that Chaikof lacked the stent (i.e., the structural support) being
made from a bioabsorbable material; and (3) determined that it would have been
obvious to one having ordinary skill in the art to have utilized the bioabsorbable material
of Berg for Chaikof's stent.
Claim 63
The appellant argues (brief, p. 12) that the limitation of claim 63 that the tubular
structure (i.e., stent) is a tubular annealed structure is not taught or suggested by the
combined teachings of Chaikof and Berg as applied in the rejection before us in this
appeal. We agree.3 The examiner has not correctly ascertained the differences
between Chaikof and claim 63 since Chaikof does not teach that his tubular structure is
annealed. Moreover, the examiner has not made any determination that it would have
3 The examiner did not respond to this argument in the answer.
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