Appeal No. 2006-2826 Page 7
Application No. 09/993,907
F.2d 1252, 1254-55, 195 USPQ 430, 433 (CCPA 1976). On this point, we see no
discussion in the specification or Appellants’ briefs addressing why DiCosmo’s prior art
hydrogel-covered device does not possess the required degree of cross-linking to make
it visible to MRI. Furthermore, although the specification provides numerous examples
of prior art hydrogels that are suitable for the claimed subject matter, Appellants do not
explain what steps must be taken to adapt them to have the claimed MRI property.
Specification, ¶¶ 28, 35. For example, the application characterizes the “cross-linked
hydrogel polymers” disclosed in the Zhong patent as “useful in the present invention,”
but does not describe what, if any, steps are necessary to modify these admitted prior
art polymers to make a medical device visible under MRI. Id., ¶35. Example 6 in the
application shows the effect of cross-linking on proton relaxation times, but does not
explain how the cross-linking procedure nor how the hydrogel, itself, differs from those
disclosed in the prior art. Id., page 31.
In sum, we find that the Examiner has properly presumed the presence of the
claimed limitation in DiCosmo, providing adequate evidence to establish prima facie
anticipation. Since Appellants have not provided any evidence to contrary, we affirm
this rejection.
Whitbourne
Claims 1, 3-7, 30, and 35 are rejected under 35 U.S.C. § 102(b) as anticipated by
Whitbourne.3
Whitbourne describes a biomedical device coated with a hydrophilic polymer that
3 Whitbourne, U.S. Pat. No. 5,331,027, issued Jul. 19, 1994.
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