Appeal 2007-1218
Application 10/850,258
the nature of a product-by-process limitation and the clamp band 82 is
patentably indistinguishable from a crimped attachment interface. As to
claim 21, we agree that Pees discloses the claimed retaining member.
As to claim 11 rejected under § 103 based on the combined teachings
of Pees and Gubitz, we note that the piston 90 of Pees has a first end near the
attachment interface and a second end 91 of greater diameter. We further
note that the greater diameter portion has a piston surface that is radially
spaced apart from the surface of the outer cylinder and that this second end
is of greater diameter that the first end. With respect to claims 23 and 24,
we agree with the Examiner that these limitations are product-by-process
limitations and as long as the piston 90 partly holds the flexible member 70
against the reduced diameter portion 32 of the outer cylinder, the claim does
not patentably distinguish over the structure shown in Pees.
PRINCIPAL OF LAW
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002). Express
anticipation occurs when the prior art expressly discloses each limitation
(i.e., each element) of a claim. Id. In addition, [i]t is well settled that a prior
art reference may anticipate when the claim limitations not expressly found
in that reference are nonetheless inherent in it. Id.
“A claimed invention is unpatentable if the differences between it and
the prior art are such that the subject matter as a whole would have been
obvious at the time the invention was made to a person having ordinary skill
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