Appeal No. 2006-2826 Page 5
Application No. 09/993,907
Anticipation under § 102
DiCosmo
Claims 1, 3-5, 30, and 35 stand rejected under 35 U.S.C. § 102(b) as anticipated
by DiCosmo.2
DiCosmo describes a medical device, such as a catheter or stent, which is
coated with a hydrogel. DiCosmo, column 5, lines 40-64. The hydrogel (“matrix
material)” is preferably a cross-linked material. Id., column 5, lines 64-67. We agree
with the Examiner that these elements meet the structural limitations of claim 1, which
requires a medical device having a substrate and a hydrogel polymer which is cross-
linked.
The Examiner argued that the hydrogel would inherently possess the claimed
functional limitation that its cross-linking be “sufficient to render said medical device
visible” under MRI. Answer, page 3. Appellants challenged this conclusion, contending
that the Examiner did not provide adequate evidence to show that the claimed feature
would be an inherent property of the hydrogel disclosed by DiCosmo. Brief, pages 6-7.
As we have construed the claim, the limitation that the hydrogel cross-linking be
“sufficient to render said medical device visible” under MRI is functional because it does
not specify the structure of the hydrogel, nor the chemical nature and degree to which it
is cross-linked. The court in In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429,
1432 (Fed. Cir. 1997) addressed the issue of a functional limitation that was alleged to
distinguished the claimed subject matter over the prior art:
2 DiCosmo et al. (DiCosmo), U.S. Pat. No. 6,475,516, issued Nov. 5, 2002.
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