Ex Parte Bluger

Patent Trial and Appeal Board

Jul 16, 2013

12377544 (P.T.A.B. Jul. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte HENRY BLUGER
__________

Appeal 2012-003698
Application 12/377,544
Technology Center 1600
__________

Before DEMETRA J. MILLS, ERIC GRIMES and ULRIKE W. JENKS,
Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm.
Appeal 2012-003698
Application 12/377,544

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STATEMENT OF CASE
Claim 1 is illustrative:
1. An implantable medical cuff comprising:
a cuff body comprising a web of biocompatible film wound into a
generally tubular configuration having opposed longitudinal edges and a
substantially circular cross-section;
at least one electrode carried on an inside surface of said web; and
a plurality of distinct open apertures distributed throughout and
penetrating completely through said cuff body to allow fluids within the
body to permeate through the apertures.

Cited References

Hoffer, (PCT) WO 01/02054 A2, Jan. 2, 2001

Grounds of Rejection
Claims 1-2 and 4-20 are rejected under 35 U.S.C. §102(b) as being
anticipated by Hoffer.

FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 4-
5. The following facts are highlighted.
1. The Specification page 9, ll. 10-12, states, “the invention
comprises an implantable medical cuff wherein the aperture or
apertures in the film are adapted to selectively transmit a particular
chemical to a portion of body tissue about which the cuff is
wrapped.”
2. The Specification page 8, ll. 19-21 states, “the aperture may
comprise a plurality of slits. The plurality of slits may be
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Application 12/377,544

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distributed throughout the web. The aperture or slits may be made
by laser cutting or any other suitable means.”
3. Hoffer, page 8, ll. 21-23 states, “one or more catheters can provide
selective delivery of pharmacological agents to the nerve stumps
for the treatment of pain.”
4. Hoffer page 13, ll. 16-18 states, “[i]n a preferred embodiment the
various apertures for electrodes 14 and catheters 25, if provided,
may be cut in the cuff wall by a laser.”

Discussion
ISSUE
The Examiner concludes that Hoffer teaches each element claimed.
Appellant argues that “a full consideration of [Hoffer] shows that its
‘apertures’ there are not equivalent to the kind of ‘apertures’ in claim 1,
which are required to be ‘penetrating completely through the cuff body to
allow fluids within the body to permeate through said apertures.’” (App. Br.
5.)
The issue is: Does the cited prior art teach the apertures as claimed?

PRINCIPLES OF LAW
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).
Appeal 2012-003698
Application 12/377,544

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Where . . . the claimed and prior art products are identical or
substantially identical, or are produced by identical or substantially
identical processes, the PTO can require an applicant to prove that the
prior art products do not necessarily or inherently possess the
characteristics of his claimed product…. Whether the rejection is
based on “inherency” under 35 U.S.C. § 102, on “prima facie
obviousness” under 35 U.S.C. § 103, jointly or alternatively, the
burden of proof is the same, and its fairness is evidenced by the PTO’s
inability to manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (emphasis added.)

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellant’s arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
anticipation. We provide the following additional comment.
We are not persuaded by Appellant’s argument that the apertures of
Hoffer do not penetrate the cuff wall. (App. Br. 5; Reply Br. 1-2.) Hoffer
discloses that both the catheters 25 and electrode slits 14 are laser cut (FF4)
in the same manner as that of the Specification (FF2). In addition both the
apertures of the Specification (FF1) and the catheters of Hoffer (FF3) are
designed to deliver drugs. Appellant even acknowledges that a catheter
allows for the passage of fluid through a hollow flexible tube (Reply Br. 2).
Therefore, the catheters of Hoffer must be open to the nerve below to deliver
the drugs or pain treatments. In the same manner, the electrode slits of
Hoffer must be open to the nerve below to provide electrical impulses to the
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Application 12/377,544

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nerve. Finally, as the Examiner pointed out (Answer 5), Hoffer’s Figure 2
shows the catheters and electrodes on the outside surface of the cuff, while
Hoffer’s Figure 3 shows them on the inside surface of the cuff, indicating
that they extend through apertures that penetrate completely through the cuff
body, as required by the claims.
Therefore, we are not persuaded by Appellant’s argument that the
apertures of Hoffer do not penetrate the cuff wall. Having no other
argument from Appellant, we affirm the anticipation rejection for the
reasons of record.

CONCLUSION OF LAW
The cited reference supports the Examiner’s anticipation rejection.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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