Appeal 2007-2812
Application 10/337,236
The Examiner finds that the device described by Kuntz has the same
structure recited in claim 23 (FF 19-21). Because the structures are the
same, the Examiner had reasonable basis for believing that they would also
perform the same function, putting the burden on Appellants to provide
arguments or evidence to the contrary. See In re Swinehart, 439 F.2d at 212-
13, 169 USPQ at 228-29; In re Best, 562 F.2d at 1254-55, 195 USPQ at 433-
34. Appellants have provided no objective evidence to rebut this reasonable
presumption.
Appellants also contend that the retrieval catheter 21 of Kuntz has
larger diameter and is made of stiffer material than the “wire in the present
application” (Reply Br. 44). We will not read limitations from the
Specification into the claims. See Sjolund v. Musland, 847 F.2d 1573, 1581,
6 USPQ2d 2020, 2027 (Fed. Cir. 1988) (“[W]hile it is true that claims are to
be interpreted in light of the specification and with a view to ascertaining the
invention, it does not follow that limitations from the specification may be
read into the claims.”); see also In re Van Geuns, 988 F.2d 1181, 1184, 26
USPQ2d 1057, 1059 (Fed. Cir. 1993) (“[L]imitations are not to be read into
the claims from the specification.”). Claim 23 does not require the wire to
have a particular diameter or stiffness. It is Appellants’ burden to show that
Kuntz’s device, which has the same structure as recited in claim 23, can not
align with the direction of an external magnetic field as required by the
claim. Because this burden has not been satisfied, we conclude that
Appellants’ have not shown that the Examiner erred in rejection claim 23
over Kuntz. We affirm the rejection of claim 23.
4 Reply Brief filed March 30, 2007.
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