Appeal No. 2002-1403 Page 8
Application No. 09/323,783
F.2d at 581, 212 USPQ at 326; Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628,
630, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987). Under the principles of inherency, if the
prior art necessarily functions in accordance with, or includes, the claimed limitations, it
anticipates. See In re King, 801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986).
However, inherency is not necessarily coterminous with the knowledge of those of
ordinary skill in the art. See Mehl/Biophile Int'l Corp. v. Milgraum, 192 F.3d 1362, 1365,
52 USPQ2d 1303, 1305-06 (Fed. Cir. 1999); Atlas Powder Co. v. Ireco Inc., 190 F.3d
1342, 1347, 51 USPQ2d 1943, 1946-47 (Fed. Cir. 1999).3
We agree with the appellants that step (c) of independent claims 25 and 29 is
not disclosed by Schatz since, contrary to the examiner's belief, step (c) of independent
claims 25 and 29 is not inherent in Schatz. In that regard, the examiner has not
adequately explained why the step of "partially inflating the balloon to secure the stent
onto the balloon" (independent claim 25) or the step of "partially expanding the
expandable member of the delivery catheter to secure the stent onto the expandable
member" (independent claim 25) is the natural result flowing from the disclosed
operation of Schatz's graft and catheter. Even assuming that the examiner is correct
that there is some residual air in Schatz's balloon 88 while the catheter 83 and graft 70
3 In this regard, we note that a rejection of independent claims 25 and 29 under 35 U.S.C. § 103
on the basis that step (c) would have been obvious at the time the invention was made to a person of
ordinary skill in the art is not before us in this appeal.
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