Appeal No. 2006-1746
Application No. 10/375,679
PRINCIPLES OF LAW (ISSUE II)
It is well settled that if a prior art device inherently possesses the
capability of functioning in the manner claimed; anticipation exists whether
there was recognition that it could be used to perform the claimed function.
See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431-32
(Fed. Cir. 1997).
ANALYSIS (ISSUE II)
Before addressing the Examiner's rejection, it is an essential prerequisite that
the claimed subject matter be fully understood. Analysis of whether a claim is
patentable over the prior art begins with a determination of the scope of the claim.
The properly interpreted claim must then be compared with the prior art. Claim
interpretation must begin with the language of the claim itself. Accordingly, we
will initially direct our attention to Applicants' claim 1 to derive an understanding
of the scope and content thereof.
From our review of the claim, we find that the language "a remote peripheral
nerve stimulator" does not specifically recite what the stimulator is remote from.
We are not persuaded by Applicants' assertion that the stimulator is remote from
the previously recited elements in the claim because the claim uses the transitional
phrase "comprising" which is open ended. As broadly drafted, the claim scope can
be construed as the needle stimulator being remote from the needle or from the
hub, or both. No convincing reason has been proffered by Applicants as to why
the claim should be limited in scope to have the remote stimulator be remote from
both the hub and the needle. While the claim may be reasonably interpreted as
12
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: September 9, 2013