Appeal 2007-2812
Application 10/337,236
same structure of the claimed guidewire – could not perform this function
when contacted with an appropriate external magnetic field. It appears that
Appellants are arguing that the claimed device is used differently than
Anderson’s. However, a method of use is not claimed here; only a device is
claimed and that device is described by Anderson.
For the foregoing reasons, we affirm the rejection of claim 1. Claims
2, 3, 6-12, 15, 16, 18, and 21 fall with claim 1 because they were not
separately argued.
Claims 13, 14, 19, and 20 under 35 U.S.C. § 102(b) as anticipated by
Anderson, or alternatively, under 35 U.S.C. § 103(a) as obvious over
Anderson (Answer 3).
Claim 14, the only claim argued by Appellants in this grouping recites
the size and material of the magnetically responsive element
and the stiffness of the distal end portion of the wire are such
that, when the guidewire is held at a point 0.5 inches proximal
to its distal tip, the maximum angle of deflection of the
guidewire tip relative to the body of the guidewire is at least 30
degrees when the applied magnetic field has a magnitude of up
to about 0.15 Tesla.
The Examiner contends that “Anderson does not expressly disclose
the stiffness or magnetic strength of the magnetically responsive element.
Instead, figure 5 appears to suggest that its guidewire has a tip that is flexible
enough to deflect to at least 30 degrees when subjected to the magnetic field
of magnet 41” (Final Office Action 7; FF 13).
When the Patent Office has reason to believe that a functional
limitation asserted to be critical for establishing patentability is possessed by
the prior art, “it possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess the
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