Appeal No. 1999-1964 Page 3
Application No. 08/349,665
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The Rejection Based Upon Kensey
Independent claims 37 and 38 and dependent claims 41-57 stand rejected as
being anticipated1 by Kensey under 35 U.S.C. § 102(b). Kensey discloses an
apparatus for removing deposits from arteries and the like. With reference particularly
to Figures 2 and 5, the Kensey apparatus comprises a tubular member provided with a
pressurized liquid supply passage 30 and a return passage 32. At the distal end of the
tubular member is a cutting wheel 58 that is caused to rotate by the action of
pressurized fluid emanating from passage 30, which wheel cuts plaque from the inside
of the vessel as it rotates. Owing to the orientation of passages in the cutting wheel
1Anticipation is established only when a single prior art reference discloses, either expressly or
under the principles of inherency, each and every element of the claimed invention. See, for example, In
re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Anticipation by a prior art reference does not require
either the inventive concept of the claimed subject matter or recognition of inherent properties that may be
possessed by the reference. See Verdegaal Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628,
633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987). Nor does anticipation require that the reference teach what
the applicant is claiming, but only that the claim on appeal "read on" something disclosed in the reference,
i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly-Clark Corp, 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007