Tuesday, March 19, 2013

Appellant prevails at Board in Ex parte Furst

Within Ex parte Furst, the appellant successfully argues "missing claim elements":

Appellant acknowledges that Hossainy “discloses a stent that could include two different biological agents.” (Reply Br. 2.) However, Appellant contends, among other things, that Hossainy does not teach or suggest (a) an intermediate compound at least partially securing the biological agent to the body member of the stent, or (b) an “intermediate compound at least partially encapsulating said biological agent in said intermediate compound,” as required by claim 89. (Id.) Appellant asserts that the recited “biological agent” includes two or more compounds. (Id.) Thus, according to Appellant, the Examiner’s finding that Hossainy taught, or alternatively, suggested at least partially encapsulating one compound, i.e., taxol or trapidil, does not satisfy the claim requirement of an intermediate compound securing and/or encapsulating said biological agent, i.e., two or more of the recited compounds, on the stent. (Id.)

We agree with Appellant. (...)

Consequently, the Examiner did not find that the prior art set forth each element in the claim. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Nor did the Examiner properly determine the differences between the claimed subject matter and the prior art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).


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