Ex Parte Farco

Patent Trial and Appeal Board

Jan 12, 2016

12732181 (P.T.A.B. Jan. 12, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/732,181 03/25/2010 Joseph Anthony Farco 1000-0001 2615
96044 7590 01/12/2016
Joseph Farco
1115 Grand St., Apt 4C
Hoboken, NJ 07030
EXAMINER
SNOW, BRUCE EDWARD
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
01/12/2016 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
________________

Ex parte JOSEPH ANTHONY FARCO
________________

Appeal 2013-003444
Application 12/732,181
Technology Center 3700
________________

Before LINDA E. HORNER, MICHAEL L. HOELTER, and
RICHARD H. MARSCHALL, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner’s Final rejection of claims 1–13 and 15–21. App. Br. 1. Claim 14
has been cancelled. App. Br. Appendix A–2 (Claims App.). Appellant
provided oral argument on December 3, 2015 (hereinafter “Transcript”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

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THE CLAIMED SUBJECT MATTER
The disclosed subject matter relates to “[f]luids that flow through the
body” and the “unique opportunity to extract additional energies separate
and apart from those stored in the fluid itself.” Spec. ¶ 2. Independent claim
1 is illustrative of the claims on appeal and is reproduced below:
1. A device, comprising:
a housing comprising an inner surface and an outer
surface, said housing implantable in an organism and
configured to receive a fluid therein; and,
an undulating wire comprising a first portion traversing
said inner surface of said housing, and a second portion
configured to rotate in said fluid, said first portion rotatably
coupling said second portion to said housing.

REFERENCES RELIED ON BY THE EXAMINER
Estevez US 6,822,343 B2 Nov. 23, 2004
Eli US 2009/0171448 A1 July 2, 2009

THE REJECTIONS ON APPEAL
Claims 1–13 and 15–21 are rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
Claims 10 and 20 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
Claims 16, 18, 19, and 21 are rejected under 35 U.S.C. § 102(b) as
anticipated by Estevez.
Claims 1–13 and 15–21 are rejected under 35 U.S.C. § 102(e) as
anticipated by Eli.
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ANALYSIS
The rejection of claims 1–13 and 15–21 as being indefinite
The Examiner provides different reasons for finding that different
claims are indefinite. Final Act. 3–4. We address each such reason/claim
separately.
Claim 1
The Examiner states that “‘[a]n undulating wire comprising a first
portion traversing said inner surface of said housing’ is not understood; what
element is being claimed?” Final Act. 3. Appellant replies that “Appellant’s
[S]pecification discusses throughout its 124 paragraphs of written
description a wire with undulations rotatably connecting itself to an
implanted device.” App. Br. 9; see also Reply Br. 9, 13.
To assist in this analysis, we note that Appellant’s Specification does
not expressly define the claim terms “undulating” or “traversing.” We turn
to their dictionary definitions for assistance.1 A dictionary definition of
“undulation” is “a wavy appearance, outline, or form.”2 Likewise, a
dictionary definition of “traverse” is “something that crosses or lies across,”

1 See Comaper Corp. v. Antec, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010)
(If the Specification does not define or suggest a particular meaning for a
term, “it is appropriate to consult a general dictionary of the word for
guidance.”).
2 WEBSTER’S NEW COLLEGIATE DICTIONARY 1268 (1979). See
also Meriam-Webster.com, http://www.merriam-
webster.com/dictionary/undulation (last visited December 31, 2015).
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as well as “to pass through.”3 Appellant’s Specification uses these terms
consistently with these definitions.4, 5
Although Appellant’s Specification fails to use the term “first
portion,” we understand from Appellant’s Specification that wire 10 has
portions.6 Thus, to answer the Examiner’s question, it is our opinion that a
skilled person, upon reading Appellant’s Specification, would understand
what is meant by “an undulating wire comprising a first portion traversing
said inner surface of said housing” (i.e., a portion of a wavy/bent wire
travels across or through an inner surface of a housing), and that what is
being claimed is this recited arrangement.

3 WEBSTER’S NEW COLLEGIATE DICTIONARY 1234 (1979). See
also Meriam-Webster.com, http://www.merriam-
webster.com/dictionary/traverse (last visited December 31, 2015).
4 “Figure 13A depicts an exemplary discrete wave looped wire 10 with
undulations at right angles.” Spec. ¶ 102. Appellant also states that
“Appellant uses the term ‘undulations’ in the [S]pecification to refer to the
bends in the rotating wire.” App. Br. 27, referencing Figure 13a.
5 In the context of a magnetic field, paragraph 40 of Appellant’s
Specification describes magnets positioned “close enough to the edges of
through-hole 16 to create a substantial magnetic field to traverse the
through-hole space” (emphasis added). Also with respect to the use of
“traverse” regarding a magnetic field, paragraph 38 of Appellant’s
Specification discusses creating “a desired magnetic field over a distance
(e.g. spanning across aperture 16)” (emphasis added). Likewise, paragraph
85 of Appellant’s Specification employs the term “traverse” in the context of
passing through by discussing a current that “traverses bridge 111” and
currents that “traverse any given point in a circuit in a given time.” App. Br.
9–10; see also Reply Br. 4–5.
6 See Spec. ¶ 31 (“[t]he portion of wire-like structure 10 rotatably coupling
it to platform 7”); see also Spec. 42 (a covering “may substantially cover
electrically conductive portions of wire 10”).

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When the Examiner addresses the limitation of “a second portion
configured to rotate in said fluid,” the Examiner asks “[w]hat is the second
portion? [w]hat is the demarcation between the first portion and second
portion?” Final Act. 3. Appellant’s Specification does not provide any
explicit demarcation between the different wire portions, but suffice it to say
that the claimed second portion is reasonably understood to be another
portion of the wire and that this claimed second portion differs from the
claimed first portion.
Accordingly, we agree with Appellant that “the language is supported
by the original [S]pecification and, when read in light of the [S]pecification,
reasonably apprises those skilled in the art of the meaning of the terms.”
App. Br. 9. We reverse the Examiner’s rejection of claim 1 as being
indefinite.
Claim 5
The Examiner addresses the recited limitation of “at least a portion of
wire” and finds that it “lacks antecedent basis and is unclear as being the
same or different than a ‘first portion’ or a ‘second portion.’” Final Act. 3.
Appellant contends that “[c]laim 1 is broad enough to have many wire
portions that are not the first or second portions recited in the Claim but may
nevertheless be recited in [c]laim 5.” Reply Br. 15. We understand
Appellant to state that this recitation to “at least a portion of wire” in claim 5
can be to the first, second, or another portion of the claimed wire. The
predecessor to our reviewing court has provided instruction that claim
breadth is not indicative of claim indefiniteness. See In re Johnson, 558
F.2d 1008, 1016 n.17 (CCPA 1977). Accordingly, we do not sustain the
Examiner’s rejection of claim 5 as being indefinite.
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Claim 12
The Examiner addresses the additional limitation of “a third wire
portion” stating that this claim phrase “is ambiguous.” Final Act. 3.
Appellant identifies several illustrated items (101, 104, and 109–112) shown
in the figures (Figures 7A, B, and E) that “may be readily understood” as the
claimed “third wire portion.” App. Br. 11. Appellant also directs attention
to paragraphs 76–90, which describe these figures and these items. App. Br.
11. In view of these teachings, we agree with Appellant that “[c]laim 12 is
not ambiguous or indefinite.” App. Br. 11. We reverse the Examiner’s
rejection of claim 12 as being indefinite.
Claim 16
The Examiner addresses the limitations of an “interior surface” and an
“exterior surface” of a prosthesis finding that these terms “are undefined in
the original disclosure and are indefinite.” Final Act. 4. Appellant notes
that the Specification “discuss[es] ‘internal’ and ‘external’ sites of the
prosthesis.” App. Br. 12 (citing Spec. ¶¶ 119, 121). Although neither of
these referenced paragraphs employ these terms, Appellant further contends
that “[a] person of ordinary skill in this art would be able to discern between
an ‘interior surface,’ which is the internal surface of the prosthesis most
proximal to the fluid streams flowing through the prosthesis, and an ‘exterior
surface,’ which is an external surface of the prosthesis more distal to the
fluid than an interior surface.” App. Br. 12; see also Reply Br. 16–17.
Appellant’s contention is reasonable and, accordingly, we do not sustain the
Examiner’s rejection that because the claim terms were not defined, that
they are indefinite. We reverse the Examiner’s rejection of claim 16 as
being indefinite.
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Claim 21
The Examiner initially addresses the limitation of “a scaffold” stating
that this term “is not understood.” Final Act. 4. Appellant states that “[t]he
ordinary meaning of the word ‘scaffold’ is a support structure.” App. Br. 12.
Appellant further references “Webster’s Ninth New Collegiate Dictionary, p.
1046” stating “[t]he ordinary meaning of ‘scaffold’ is defined as ‘2: a
supporting framework.’”7 Reply Br. 6; see also Reply Br. 18. Appellant
contends that “Appellant’s [S]pecification discloses one or more support
structures (e.g., a stent).” Reply Br. 6. The Examiner does not explain how
Appellant’s explanation is in error (“the [E]xaminer has no additional
comments” pertaining to this rejection). Ans. 10.
The Examiner also addresses “the scope of ‘traversing at least one
surface of said scaffold’” and asks “[w]hat is the scope of ‘at least one
surface?[’]” Final Act. 4. On this point, Appellant replies that “[t]he phrase
‘traversing at least one surface’ means at least one surface of the support
structure,” and that this surface will be traversed by a wire. App. Br. 12; see
also Reply Br. 18. At oral argument, Appellant also suggested that a surface
can be traversed via either of its sides. Transcript 23. The Examiner does
not indicate how Appellant is in error. We reverse the Examiner’s rejection
of claim 21 as being indefinite.
In view of the above, we reverse the Examiner’s rejection of claims
1–13 and 15–21 as being indefinite.

7 See also Meriam-Webster.com, http://www.merriam-
webster.com/dictionary/scaffold (last accessed December 31, 2015).
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The rejection of claims 10 and 20
as failing to comply with the enablement requirement
Dependent claim 10 recites the additional limitation of a “drug
released by at least said current.” The language of claim 20 differs slightly,
i.e., “said induced charge assisting [in] release of said drug.” The Examiner
states that “Applicant’s device produces such a small amount of current that
it would not be possible to accomplish this task.” Final Act. 5. We note that
the references relied upon by the Examiner with respect to the
accompanying anticipation rejections, i.e., Estevez and Eli, both teach a
device that, like Appellant’s, employs an organism’s fluid flow to generate
electricity. See Eli ¶ 37; Estevez 1:10–12. With respect to Eli, the Examiner
(apparently contrarily) states that “[t]he current in the wire of Eli would
inherently assist in release of the drug.” Final Act. 8. Estevez expresses the
ability to generate “electricity sufficient to power one or more electronic
devices coupled to the generator.” Estevez 2:1–4. In view of these explicit
teachings, the Examiner does not elaborate or otherwise explain how the
amount of current generated by Appellant’s device is too small such that this
limitation is not enabled. See also Reply Br. 19. Furthermore, paragraph
120 of Appellant’s Specification discusses the use of a drug “that may react
when a charge is induced in wire 10” and Appellant incorporates by
reference an application directed to “[n]on-dynamic signal-activated drug
deployment.” See also App. Br. 14–15. In view of the above, we do not
sustain the Examiner’s rejection of claims 10 and 20 as lacking enablement.
The rejection of claims 16, 18, 19, and 21 as anticipated by Estevez
Appellant argues independent claim 16 and dependent claim 18
together (App. Br. 16–29); claim 19 separately (App. Br. 29) and claim 21
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separately (App. Br. 29). We select claims 16, 19, and 21 for review with
claim 18 standing or falling with claim 16. See 37 C.F.R. § 41.37(c)(1)(iv).
Claim 16
Claim 16 is directed to a prosthesis having an interior and an exterior
surface, a cavity “between” these surfaces and a wire within the cavity that
is configured to rotate in a fluid when the prosthesis is “coupled with an
organism.” Appellant contends that “Estevez is non-enabled prior art and
cannot anticipate Appellant’s Claims.” App. Br. 16; see also Reply Br. 20.
More specifically, Appellant states that Estevez “does not disclose the
technical details of generator 16 as it is to be used in device 50 – the device
that is implanted inside an organism.”8 App. Br. 17.
In arguing that Estevez is “non-enabled prior art” (App. Br. 16),
Appellant addresses the various Wands factors and argues that “the prior art
must enable the claimed invention.”9 App. Br. 19; see also App. Br. 20–27;
and Reply Br. 20–21. Appellant addresses five different topics concluding
that “Estevez cannot serve as § 102(b) prior art to any of Appellant’s
Claims.”10 App. Br. 27.

8 Appellant also argues that the Examiner improperly relied on “hindsight
enablement” because “the DC generator is immediately recognizable once
one can see Appellant’s disclosures.” Reply Br. 21. However, the Examiner
finds that Estevez discloses a DC generator used in a similar manner and
hence there is no indication that the Examiner gleaned the use of a DC
generator solely from Appellant’s disclosure. Final Act. 6, see also Estevez
2:65 to 3:4.
9 In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
10 (1) more than a decade of experimentation was required; (2) Estevez
provides no guidance how to make an implantable generator; (3) no fully
assembled examples are disclosed in Estevez; (4) the state of the art requires

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Claim 16, as discussed supra, is not overly detailed in that claim 16
requires a prosthesis that receives a fluid; a cavity between the inner and
outer surfaces of the prosthesis; and, a wire coupled within the cavity that
rotates in the fluid. Estevez is relied on by the Examiner for its disclosure
that:
For example, generator 16 may include a direct current (DC)
generator with a turbine that, in response to movement of fluid
18 through generator 16 as user 12 breathes, rotates a wire coil
around an axis and through a magnetic field created by
permanent magnets to induce an electric current in the wire
coil.
Estevez 2:65 to 3:4; see also Estevez Figs. 1 and 2; Final Act. 6. Estevez
also expressly states “[a] generator coupled between the inner portion and
the outer portion is capable of generating electricity according to repeated
flow of the fluid . . . through the generator in response to cyclical activity of
the biological system.” Estevez 1:63 to 2:1.
Accordingly, Estevez expressly discloses (a) a device that receives a
fluid; (b) a cavity (i.e., where the generator is located) between inner and
outer portions of the device; and, (c) a wire coil that rotates in accordance
with repeated fluid flow through the device. Appellant’s contention that
more than a decade of experimentation was required before such an implant
was actually (and presumably successfully) installed in a human artery is not
persuasive that Estevez is non-enabled or fails to disclose the limitations of
claim 16. Further, Appellant acknowledges Estevez’s teaching that
“[s]uitable generators 16 are well known to those skilled in the art” (App.
Br. 23(emphasis added) (citing Estevez 3:12–13) yet Appellant asks the

disclosure of how the generator sits in the device; and, (5) Estevez’s claims
are overbroad. App. Br. 20–26.
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Board to ascertain that this is an invalid statement (and hence disregard it)
and that, instead, no suitable generators were known for quite some time
after Estevez. See App. Br. 21. We are not inclined to do so. Regarding
Appellant’s contention that Estevez provides no guidance as to how to make
an implantable generator, this contention is not persuasive because Estevez
explicitly discusses the use of a wire rotating around an axis through a
magnetic field in response to the cyclical activity of the biological system.
See supra. Regarding the lack of a fully assembled example in Estevez,
Appellant focuses on Estevez’s figures and not the written description
portion of Estevez replicated above.11 See App. Br. 21, 23; see also Reply
Br. 22. We are also mindful of Estevez’s admonishment (see supra) that
“[s]uitable generators 16 are well known” (Estevez 3:12–13) and hence it
appears that there was no need for Estevez to replicate something that was
well known. Regarding Appellant’s contention that the state of the art
requires how the generator sits in the device, it is readily apparent from
Estevez’s Figure 1 where the generator is located, and that it is specifically
located between inner and outer portions of the device. See Estevez 1:63–
64. Regarding Appellant’s assertion that Estevez’s claims are overbroad,12

11 In a similar vein, Appellant contends that “the Examiner does not show
Appellant this DC generator fully-assembled in the Estevez reference.”
Reply Br. 23; see also Reply Br. 24. However, Appellant does not indicate
why the Examiner need provide a reference showing a fully-assembled DC
generator when Estevez clearly discusses a DC generator that “rotates a wire
coil around an axis.” Estevez 2:66 to 3:2.
12 On this point, Appellant does not address Estevez’s claims, but instead a
statement in the written description of Estevez that not only are suitable
generators well-known, but that “the present invention encompasses all such
generators 16 that are currently available or may be developed in the future

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this may affect the validity of the claim in question, but Appellant’s
assertion is not persuasive that Estevez fails to properly enable a generator
powered by a biological system.
In summary, upon review of each of the factors addressed by
Appellant (see App. Br. 20–26), we are not persuaded that the Examiner
erred in relying on Estevez, or that Estevez is not applicable prior art.
Appellant also addresses the claim limitation regarding the cavity
being “between” the interior and exterior surface of the prosthesis as recited
in independent claim 16. App. Br. 27–28; see also Reply Br. 22. The
Examiner references both Estevez device 10, and also Estevez device 50, in
making this rejection. Final Act. 6; see also App. Br. 27. Both devices
disclose the generation of “electric power in response to activity of a
biological system.” Estevez 1:10–12. However, in support of Appellant’s
contention, Appellant focuses on Estevez’s device 50 (App. Br. 27) and does
not address Estevez’s other device 10 which clearly discloses a generator
that is “coupled between the inner portion and the outer portion.” Estevez
Fig. 1 and 1:63–64.
Appellant further addresses Estevez’s disclosure of a wire coil
contending that “[t]his recitation does not disclose ‘a looped wire rotatably
coupled with said cavity’” because Estevez associates this wire with a
turbine and, that “[a] turbine is not a cavity as recited by [c]laim 16.” App.
Br. 28. To be clear, Estevez expressly discloses a “direct current (DC)
generator with a turbine” that “rotates a wire coil.” Estevez 2:66 to 3:1.
Estevez also discloses the location of the “generator with a turbine” in the

as technology further advances, whether or not explicitly described herein.”
Estevez 3:12–18; see also App. Br. 26.
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figures, i.e., in a cavity between interior and exterior surfaces of device 50.
See Estevez 1:63–64. As such, Appellant’s reference to a generator and a
turbine that are disclosed as being within a cavity is not persuasive of
Examiner error. Regarding the wire and whether it is “looped” or not,
Appellant does not explain how there can be a wire “coil” without the wire
being “looped.”
In summary, and based on the record presented, we are not persuaded
of Examiner error. We sustain the Examiner’s rejection of claims 16 and 18
as being anticipated by Estevez.
Claim 19
Dependent claim 19 includes an additional limitation directed to “a
circuit coupled to a portion of said looped wire within said cavity.”
Appellant contends that “[t]he Examiner failed to properly reject claim 19’s
language by citing to the specific portions of Estevez where the claim’s
language is located.” App. Br. 29; see also Reply Br. 25. The Examiner
clearly found that “[s]aid cavity includes a DC generator” (Final Act. 6) and
Appellant fails to persuade us that one skilled in the art would not
understand from a reading of Estevez that Estevez’s DC generator has a
circuit coupled to a looped wire in order for it to operate. Appellant’s
contention is not persuasive of Examiner error. We sustain the Examiner’s
rejection of claim 19.
Claim 21
Appellant objects to the “single sentence” employed by the Examiner
in rejecting this claim stating that “[t]hat single sentence utterly fails to show
where in Estevez each and every limitation of Claim 21 is disclosed.” App.
Br. 29; see also Reply Br. 25. Claim 21, to some degree, mirrors the
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limitations of claim 16 discussed supra but claim 21 also employs the term
“scaffold” instead of the word “prosthesis.” The Examiner provided reasons
for rejecting both claim 16 and claim 21 (Final Act. 6) and the Examiner
also specifically addressed this scaffold/prosthesis difference in claim 21
stating that “the scaffold is interpreted as the element which receive[s] the
generator and flowing fluid.” Final Act. 7. In view of the Examiner’s stated
rejection, we are not persuaded the Examiner erred in disclosing how this
particular term, or the other terms of this claim, was interpreted. We sustain
the Examiner’s rejection of claim 21.
The rejection of claims 1–13 and 15–21 as anticipated by Eli
Appellant presents arguments for claims 1–4, 7, 11–13, and 15 as a
group (App. Br. 30–31); claims 5, 6, 8, 9, 11, and 12 as a group (App. Br.
31); claims 16–19 as a group (App. Br. 31–32); claims 10 and 20 as a group
(App. Br. 32); and claim 21 (App. Br. 33). We select claims 1, 5, 16, 10,
and 21 for review with the remaining claims of each group standing or
falling with their respectively selected claim. See 37 C.F.R.
§ 41.37(c)(1)(iv).
Claim 1
Independent claim 1 includes the limitation of a wire having a first
portion and a second portion, with “said first portion rotatably coupling said
second portion to said housing.” Appellant contends that “Eli’s stent
support structure does not rotatably couple to the graft and does not rotate in
the organism lumen.” App. Br. 30. In other words, “Eli's stent support
structure cannot be the recited ‘undulating wire’ of [c]laim 1 because it
cannot rotate.” App. Br. 30.
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Appellant does not understand the Examiner’s rejection as do we. It
is not disputed that the Examiner correlates the claimed rotatable “second
portion” as “for example element 830.” Final Act. 8. Regarding the claimed
first portion of the wire, the Examiner correlates this to the “stent,
supporting structure” (note the comma) concluding that Eli’s “[s]aid first
portion rotatably coupl[es] said second portion to said housing.” Final Act.
8.
Starting with the claimed “second portion,” Eli identifies “element
830” as a “rotating portion.” Eli ¶ 119. Eli also states that “the rotating
portion is stably connected to the frame of a vessel support structure in a
number of optional configurations.”13 Eli ¶ 20. One example of such a
connection involves rotors. See Eli ¶¶ 102–104. Paragraphs 102 and 104 of
Eli describe the “rotating portion” as comprising a blade and a rotor, with
the rotor “optionally molded and/or integrally formed with” the blade.14 Eli
thus describes a “rotating portion” as having a blade portion and a rotor
portion, the rotor portion “rotatably coupling said second portion (i.e., the
blade portion) to said housing” as claimed. Hence, to address Appellant’s
contention, we do not understand the Examiner as finding that the stent itself
rotates, but instead that a “rotating portion” of the stent rotates, and that this
“rotating portion” has corresponding first and second portions consistent
with that which is claimed. Appellant seems to grasp this distinction
between the blade and rotor portions by acknowledging that “[t]he actual

13 Eli paragraph 15 also states that both the “vessel support structure and the
rotating portion of the device are optionally and preferably made of . . . [a]
wire frame.”
14 Paragraph 103 of Eli merely states that the blades “are optionally molded
with the rotor.”
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rotating blades disclosed in Eli do not simultaneously rotate and couple to
the stent or graft. Instead, the blades rely on rotors anchored by springs to
permit movement in the fluid.” App. Br. 30. Nevertheless, Appellant
contends that “[t]o the extent the Examiner is making a completely new
argument trying to equate the recited ‘first portion’ of Claim 1 with Eli’s
rotor, the Examiner is incorrect.” Reply Br. 25–26. In support thereof,
Appellant addresses the distinction between the wire and a rotor but fails to
address Eli’s disclosure that the two may be molded or integrally formed
together, thus forming different portions of the same wire-like device. See
Reply Br. 26; see also Eli ¶¶ 15 and 102–104. Appellant does not explain
how Eli’s use of blades, rotors, and stents, along with various other
supporting structure, fail to disclose the limitations of claim 1. We sustain
the Examiner’s rejection of claims 1–4, 7, 11–13, and 15 as being
anticipated by Eli.
Claim 5
Dependent claim 5 recites the additional limitation of “oppositely
polarized magnets separated by at least a portion of wire.” The Examiner
references Figure 7 of Eli which discloses “a generator 706 which inherently
has a portion of wire between oppositely polarized magnets.” Final Act. 8;
see also App. Br. 31. Appellant contends that “this figure shows no such
thing,” and that the Examiner “failed to provide objective evidence or cogent
technical reasoning to support the conclusion of inherency with respect to
[c]laim 5.” App. Br. 31; see also Reply Br. 27. Generator 706 depicted in
Figure 7 of Eli is discussed in paragraph 114 of Eli. This paragraph 114 of
Eli states that “[t]he rotational mechanical energy created by rotating portion
700 optionally may be converted to electrical energy or other forms of
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energy, preferably by coupling rotating portion 700 to electronic portion 706
that may optionally include a generator.” Appellant appears to be arguing
that a generator that converts rotational mechanical energy to electrical
energy does not necessarily include “oppositely polarized magnets separated
by at least a portion of wire” as claimed. We find that the Examiner had a
sound basis for finding that the generator of Eli inherently possesses
oppositely polarized magnets separated by at least a portion of wire to
convert the rotational mechanical energy to electrical energy. Here,
Appellant does not indicate how a generator as described in Eli might lack
such structure and still effect such a conversion of mechanical to electrical
energy, nor does Appellant otherwise present evidence to this effect, and it is
also not self-evident from the record. Accordingly, we sustain the
Examiner’s rejection of claims 5, 6, 8, 9, 11, and 12.
Claim 16
As discussed previously, independent claim 16 includes the limitation
of “a cavity between said interior surface and said exterior surface”
(emphasis added). See also App. Br. 31–32. The Examiner addresses this
limitation stating that
[t]he inner surface was interpreted as the inner surface of the
graft or stent forming the cavity. It is true to say the cavity is
located between an exterior surface. It is also true to say the
cavity of Estevez [sic, Eli] is located between an interior
surface. Therefore, the cavity is located between both, the
cavity is located between said interior surface and said exterior
surface.
Ans. 12.
The Examiner’s logic treats each surface individually stating that
because the cavity in Eli is between each of the surfaces individually, the
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cavity must therefore also be between both of them. We do not find this
logic persuasive in light of the limitation identifying both an interior surface
and an exterior surface, and reciting a cavity “between” these respective
surfaces. In short, the Examiner does not identify a cavity in Eli where the
cavity itself is located “between” an interior surface and an exterior
surface.15 We reverse the Examiner’s rejection of claim 16, and also
dependent claims 17–20, as being anticipated by Eli.
Claim 10
Dependent claim 10 recites the additional limitation of “a releasable
drug released by at least said current.” The Examiner finds that “[t]he
current in the wire of Eli would inherently assist in release of the drug.”
Final Act. 8, referencing Eli ¶¶ 57–59. Appellant contends that “[t]he
Examiner gives absolutely no technical reasoning why Eli’s disclosure
‘inherently’ can accomplish the task of releasing a drug.” App. Br. 32; see
also Reply Br. 29.
The Examiner’s referenced paragraph 57 of Eli discusses coating the
wire with a drug. Paragraph 59 of Eli discusses releasing a drug via
different procedures including “a magnetic reaction” (but no mention of a
“current”). The Examiner (nor Eli) does not elaborate further on this
disclosed drug release via “magnetic reaction,” or whether such release
involves a current. Accordingly, the Examiner has not indicated how Eli’s

15 For example, during oral argument, Appellant’s counsel directed us to
consider a room in a building having interior and exterior walls. Transcript
9–10. Following Appellant’s lead, we presume for illustrative purposes that
the exterior walls are brick and the interior walls are drywall. Clearly, the
room/cavity is between the exterior brick and the room is also between the
interior drywall, however, the room is not between the brick and the drywall.
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“magnetic reaction” drug release inherently discloses “each and every”
limitation of claim 10. See Verdegaal Bros., Inc. v. Union Oil Co. of Cal.,
814 F.2d 628, 631 (Fed. Cir. 1987). We reverse the Examiner’s rejection of
claim 10 as being anticipated by Eli.
Claim 20 recites “means for inducing charge in said looped wire, said
induced charge assisting release of said drug.” Again, the Examiner does
not elaborate on the “inherency” finding that is relied upon to reject this
claim (see Final Act. 8) even after Appellant states that “[t]he Examiner
gives absolutely no technical reasoning” as to why this might be the case.
App. Br. 32. Because we are presented with what appears to only be
speculation on the part of the Examiner, we likewise reverse the Examiner’s
rejection of claim 20 as being anticipated by Eli.
Claim 21
As stated above, the limitations of claim 21, to some degree, mirror
the limitations of claim 16 discussed supra, but claim 21 employs the term
“scaffold” instead of the word “prosthesis” and does not include the “cavity”
limitation discussed above with respect to claim 16. Appellant contends that
“Claim 21 was never properly rejected” because “Appellant’s [c]laim 21
does not recite ‘second portion’ and so the Examiner’s rejection is right
away in error.” App. Br. 33; see also Reply Br. 28. Appellant also contends
that “[t]he Examiner also fails to state where the remaining elements of
[c]laim 21 are located in Eli.” App. Br. 33.
The Examiner finds that with respect to claim 21, “the scaffold is
interpreted as the housing” and further that “[t]he looped wire is interpreted
as the second portion.” Final Act. 8. While the Examiner may have
provided a superfluous statement (i.e., “[t]he looped wire is interpreted as
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the second portion”), this alone is not sufficient to warrant a reversal of the
Examiner’s rejection as argued by Appellant. When rejecting the claims
under Eli, the Examiner made findings that apply to all the claims and the
Examiner also made findings directed to more specific claims, as was done
with respect to claim 21. Final Act. 7–8. Here, the Examiner expressly
stated how the claim term “scaffold” (found only in claim 21) is interpreted.
Final Act. 8. Appellant does not identify any terms that were overlooked by
the Examiner in making this rejection. See App. Br. 33. Accordingly, in
view of the Examiner’s stated rejection, we are not persuaded the Examiner
erred. We sustain the Examiner’s rejection of claim 21.
DECISION
The Examiner’s rejection of claims 1–13 and 15–21 as being
indefinite is reversed.
The Examiner’s rejection of claims 10 and 20 as failing to comply
with the enablement requirement is reversed.
The Examiner’s rejection of claims 16, 18, 19, and 21 as anticipated
by Estevez is affirmed.
The Examiner’s rejection of claims 1–9, 11–13, 15 and 21 as
anticipated by Eli is affirmed.
The Examiner’s rejection of claims 10 and 16–20 as anticipated by Eli
is reversed.
In summary, the Examiner’s rejections of claims 1–9, 11–13, 15, 16,
18, 19, and 21 are affirmed, while the Examiner’s rejections of claims 10,
17, and 20 are reversed.

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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).

AFFIRMED-IN-PART

rvb