Ex Parte HALL et al - Page 5




              Appeal No. 2002-1492                                                                  Page 5                
              Application No. 09/352,161                                                                                  


              698, 227 USPQ 964, 966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231 USPQ                          
              136, 138 (Fed. Cir. 1986).                                                                                  


                     Claims 1 to 25 under appeal recite, inter alia, a magnetically active element or a                   
              magnetic element located proximate the distal tip of a catheter responsive to externally                    
              applied magnetic fields whereby the externally applied magnetic fields direct and orient                    
              the distal tip of the catheter.  The examiner's position is that the claimed magnetically                   
              active element or magnetic element is inherently met by Abela's navigation device 24 or                     
              124.  The appellants disagree.                                                                              


                     Abela's navigation device 24 or 124 senses magnetic fields established by                            
              external coils 20 or 120 so that a computer can compare the sensed magnetic fields                          
              with the known sequence of energizing the external coils and thereby determine the                          
              position of the distal end of the catheter.  Abela's navigation device 124 is shown in                      
              Figure 2 as first and second non-coplanar magnetic sensing coils 124F and 124S                              
              respectively, both of which have wires 124W carrying navigation signals to the proximal                     
              end of the catheter.  Abela's navigation device 124 is shown in Figure 5 as sensing coils                   
              124F, 124S and 124T on the distal end 132D of the catheter.  Abela teaches (column                          
              10, lines 33-54) that:                                                                                      
                            Although the magnet elements 124F, 124S, and 124T have been                                   
                     described as sensing coils such as two lead wound magnet wire coils, alternative                     







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