Appeal 2006-3416
Application 10/884,751
Claims 18 and 19 depend from independent claim 11 and further recite the
particular material of the claimed first flange. The Examiner failed to explain why
one having ordinary skill in the art at the time the invention was made would have
been led to modify the graft of Furst to add a flange. As we found supra, Furst
does not disclose the claimed “first flange” (Finding of Fact 8). Similarly, we see
no reason why one having ordinary skill in the art would have added a flange to a
graft. Specifically, Furst’s graft is described as being used inside a body
passageway to provide support and/or to open block passageways (Finding of
Fact 9), and in such use, there would have been no reason to add a flange to the
graft. As such, the Examiner has failed to set forth a prima facie case of
obviousness of claims 18 and 19 and we cannot sustain the rejection of these
claims.
NEW GROUNDS OF REJECTION
Rejection of claim 3 under 35 U.S.C. § 112, second paragraph
Claim 3 depends from independent claim 11 and recites, “wherein at least
one of said projection is substantially trapezoidal” (emphasis added). Claim 11
does not contain any recitation of “a projection.” As such, the phrase “said
projection” in claim 3 lacks proper antecedent basis. The test for definiteness
under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would
understand what is claimed when the claim is read in light of the specification.”
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576, 1 USPQ2d
1081, 1088 (Fed. Cir. 1986) (citations omitted). We find that claim 3 is indefinite
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