Appeal No. 2002-1403 Page 7
Application No. 09/323,783
The appellants argue throughout the briefs that step (c) of independent claims 25
and 29 is not disclosed by Schatz.2 The examiner believes (answer, pp. 4-5) that step
(c) of independent claims 25 and 29 is inherent in Schatz since (1) there is no such
thing as a pure or total vacuum so there should be some residual air however
infinitesimal the amount in the balloon and (2) a balloon must be expanded to some
degree in order to engage the stent (i.e., graft 70) for deployment.
To anticipate a claim, a prior art reference must disclose every limitation of the
claimed invention, either explicitly or inherently. In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997). As stated in In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981) (quoting Hansgirg v. Kemmer, 102 F.2d 212, 214, 40
USPQ 665, 667 (CCPA 1939)) (internal citations omitted):
Inherency, however, may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of circumstances is not
sufficient. If, however, the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance of the
questioned function, it seems to be well settled that the disclosure should be
regarded as sufficient.
Thus, a prior art reference may anticipate when the claim limitation or limitations not
expressly found in that reference are nonetheless inherent in it. See In re Oelrich, 666
2 Step (c) of independent claim 25 recites "partially inflating the balloon to secure the stent onto
the balloon." Step (c) of independent claim 29 recites "partially expanding the expandable member of the
delivery catheter to secure the stent onto the expandable member."
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007