Appeal No. 2004-2035
Application 09/978,763
inclusion of any additional materials and layers in any amount, including the presence of other
drugs than that specified.
The alternative grounds of rejection under §§ 102(b) and 103(a) require separate
consideration under each statutory provision, and accordingly, we consider the application of
Berg to appealed claim 75 on this basis. See generally, In re Spada, 911 F.2d 705, 707 n.3,
15 USPQ2d 1655, 1657 n.3 (Fed. Cir. 1990). We first consider the ground of rejection of
claim 77 as anticipated by Berg under § 102(b). Appellants submit that while Berg “mentions a
Palmaz stent (i.e., a patterned stent) and lists polyvinyl aromatics as one of the polymers that
could be used to coat the stent, [Berg] does not teach or suggest that such stents release a drug
over a time frame of at least about seven days that is sufficient to prevent or inhibit undesired
cellular proliferation” as required by the claim (brief, page 4). Appellants point out in this
respect, that the stents of Berg Examples 6 and 7 are “Wiktor wire stents”2 coated with a
different polymer tested for time release in buffered saline, and that no time period is stated for
the release of drugs in testing of control stents in the coronary arteries of pigs in the latter
Example (id., pages 4-6). The examiner responds that because appellants have not exemplified
in their specification a patterned stent specified in claim 77, they should not be heard to argue
that the allegedly analogous coil stents in Berg Examples 6 and 7 are not anticipatory (answer,
pages 4-6). We agree with appellants that the “comparison of Berg with the Appellants’
specification has no place in a proper anticipation analysis” (reply brief, pages 2-4).
Indeed, it is well settled that in order for the examiner to establish a prima facie case of
anticipation, each and every element of the claimed invention, arranged as required by the claim,
must be found in a single prior art reference, either expressly or under the principles of
inherency, in a manner sufficient to have placed a person of ordinary skill in the art in possession
thereof. See generally, Spada, 911 F.2d at 708, 15 USPQ2d at 1657. Whether the teachings and
inferences that one skilled in this art would have found in the disclosure of an applied reference
2 We note here that appellants disclose that “[s]tents are generally configured in one of two
configurations: patterned or coil. Coil-type stents, include, for example, wire stents in the form
of coils, spirals or the like, with or without spines, an example of which is the subject of” Wiktor
(specification, page 26). Wiktor illustrates the stints as a coil in FIGs. 1 and 2 thereof.
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