Appeal No. 2005-1078
Application 09/681,303
on the criteria of, among others, flexibility and the capability to absorb stresses in order “to be
driven through the very tight curves and bends encountered along the tortuous path” in reaching
the desired location within a patient’s body (e.g., col. 5, ll. 54-62, 9, ll. 9-18, col. 15, ll. 46-56,
FIG. 7, and col. 18, ll. 43-53). Thus, Liprie ‘781 provides substantial evidence for the position
that as a matter of fact, the metals taught in Liprie ‘781 exhibit effective flexibility under the
conditions of use for the claimed flexible source wire and thus fall within the limitation of “little
. . . memory retention” of appealed claim 1 as we have conditionally interpreted this claim
language above. Indeed, as the examiner, points out, it can reasonably be inferred from
appellant’s argument that once bent, “the stainless steel [of the reference] would stay in the bent
position” (answer. Page 8). We find no teachings in Liprie ‘781 which support appellant’s
position that the claimed “little or no memory retention” limitation patentably distinguishes the
metals of Liprie ‘781, and appellant has not relied on any evidence in the record in this respect.
Accordingly, appellant’s unsupported position is thus entitled to little, if any, weight.
Appellant further contends with respect to the requirement for an encapsulated radiation
source or sources in appealed claim 24 (see also appealed claim 4), that while Liprie ‘781 “does
teach providing a radioactive source within a capsule, it does not teach placing that capsule
material within a housing tube,” pointing to col. 4, ll. 10-24, of the reference on which the
examiner relied (answer, pages 4 and 8-9). Appellant refers to van’t Hooft et al. (van’t Hooft7)
as describing “a capsule holding a radioactive source, which is either simply welded to a sheared
end of a drive cable” or otherwise attached to such a cable, contending that neither reference
teaches the limitation of claim 24 (brief, pages 8-9). The examiner contends that “there is no
indication within the passage [of Liprie ‘781] that the referenced prior art refers to only [van’t
Hooft]” (answer, page 9).
Whether the teachings and inferences that one skilled in this art would have found in the
disclosure of an applied reference would have placed this person in possession of the claimed
invention, taking into account this person’s own knowledge of the particular art, is a question of
fact. See generally, In re Graves, 69 F.3d 1147, 1152, 36 USPQ2d 1697, 1701 (Fed. Cir. 1995),
and cases cited therein (a reference anticipates the claimed method if the step that is not
7 United States Patent 4,861,520, issued Aug. 29, 1989, of record.
- 7 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007