Appeal 2006-0959
Application 10/075,914
different dimensions more suited to such use.” (Ragheb, col. 7, ll. 3-11).
Therefore, depending on where the stent is placed, the metallic stent may
very well be insufficient to maintain patency of the lumen. The problem
again is one of claim breath. The language of the claim does not limit the
structure of the metallic reinforcing component to any particular dimensions
and, therefore, does not distinguish the claimed stent structure from the
structure of the prior art. While Appellant argues that the Examiner’s
rejection is based on a theory of inherency, the true issue here is one of
claim breath.
Lastly, we note that the question here is not whether Ragheb teaches
the “concept of the invention” as put by Appellant. It is whether Ragheb
describes what is claimed when the claim terms are given their broadest
reasonable interpretation as they would be understood by one of ordinary
skill in the art reading the specification. “[T]he name of the game is the
claim.” In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529
(Fed. Cir. 1998).
We conclude that the Examiner has established a prima facie case of
anticipation with respect to the subject matter of claims 1-10, 13, 15, 18,
20-22, 25, and 27 which has not been sufficiently rebutted by Appellant.
2. Rejection of claims 1, 5-10, 12, 13, and 14 over Wolff.
To reject claims 1, 5-10, 12, 13, and 14, the Examiner also relied upon
Wolff as evidence of anticipation. Appellant states that many of the
arguments directed to the rejection over Ragheb are relevant to Wolff. For
reasons analogous to those discussed above, we do not find those arguments
persuasive.
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