1 Pfizer, Inc. v. Apotex, Inc., 380 F.3d 1348, 82 USPQ2d 1321 (Fed. Cir.
2 2007).
3 E. Discussion
4 Anticipation
5 The Examiner’s rejection of the claims for anticipation under 35
6 U.S.C. § 102(b) is foreclosed by the Federal Circuit’s decision in Atofina v.
7 Great Lakes Chemical Corp., 441 F.3d 991, 78 USPQ2d 1417 (Fed. Cir.
8 2006).
9 Just as the ranges in Atofina were not anticipated by the prior art, so it
10 is here.
11 Appellants’ collective ranges of (1) braided support outside diameter
12 of 1.5 mm to 2.5 mm and (2) porous substance wall thickness of between
13 0.05 mm and 0.3 mm are not anticipated by Mahendran’s collective ranges
14 of (A) braided support outside diameter of about 0.6 mm to 2.5 mm and
15 (B) porous substance wall thickness of between 0.01 mm to 0.1 mm even
16 though both of appellants’ ranges overlap those described by Mahendran.
17 No embodiment described by Mahendran has been shown to include
18 all of the limitation of the claims on appeal.
19 At the time the Examiner entered the Examiner’s Answer in July of
20 2006, the Examiner may not have known of Atofina which was decided in
21 March of 2006, with a petition for rehearing en banc being denied in May of
22 2006. We would be surprised that if the Examiner had known of Atofina,
23 the anticipation rejection would have been maintained on appeal.
24 Because the anticipation rejection is essentially controlled by the
25 rationale of Atofina, we now reverse that rejection.
9
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