10752864 - (D) (B.P.A.I. Feb. 11, 2009)

Ex Parte Eberhardt

Board of Patent Appeals and InterferencesFeb 11, 2009

10752864 - (D) (B.P.A.I. Feb. 11, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte CAROL E. EBERHARDT __________ Appeal 2008-4550 Application 10/752,864 Technology Center 3700 __________ Decided:1 February 11, 2009 __________ Before DONALD E. ADAMS, ERIC GRIMES, and JEFFREY N. FREDMAN, Administrative Patent Judges. FREDMAN, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date shown on this page of the decision. The time period does not run from the Mail Date (paper delivery) or Notification Date (electronic delivery). Appeal 2008-4550 Application 10/752,864 Appellant has requested rehearing (reconsideration) of the decision entered November 18, 2008. That decision affirmed the Examiner’s rejection of claims 1, 3-19, and 21-31 under 35 U.S.C. § 103(a). Appellant’s request has been granted to the extent that the decision has been reconsidered, but such request is denied with respect to making any modifications to the decision affirming the Examiner's rejection under 35 U.S.C. § 103(a). DISCUSSION Appellant notes that the previous decision gave “no explanation or analysis of the rejection of independent claim 31” (Req. Recon. 2). Appellant contends that “the Board misapprehended or overlooked Appellant’s positions with respect to independent claim 31” (id.). We agree with Appellant that claim 31 was not separately addressed, and therefore reconsider claim 31, as requested. Appellant contends that “claim 31 as a whole recites more than just ‘cutting’ and does imply, and in fact explicitly recites, a structure that must be considered when assessing the patentability of the claim over the cited art” (id. at 2-3). Appellant further contends that “[i]ncorporation of first and second porcine aortic valves into the structure of claim 31 imparts distinctive structural characteristics to the final product” (id. at 3). The Examiner addresses the requirement of “cutting the leaflets from first and second porcine aortive valve[s]” (Ans. 6). The Examiner did “not give weight to this claim requirement because it is a product by process limitation. Brownlee discloses using the same porcine aortic valve material and the combination as modified by Bochan discloses the same structure 2 Appeal 2008-4550 Application 10/752,864 therefore the end products will be the same however they are obtained or assembled” (Ans. 6-7). The issue is whether the limitation of a “second leaflet being cut from a second porcine aortic valve” alters the overall structure of the prosthetic valve of claim 31 to render the valve different than the valve rendered obvious by Brownlee and Bochan. While Appellant states that using a second porcine aortic valve “imparts distinctive structural characteristics to the final product” (Req. Recons. 3), Appellant fails to identify any evidence of specific differences that result from the use of a second porcine aortic valve in making the prosthetic valve of claim 31. We agree with the Examiner that in a “product by process” situation, “[t]he patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985). Appellant has provided no evidence or reason why the product of claim 31 is unobvious over Brownlee and Bochan for the reasons given in the Decision. Appellant also does not point to any persuasive evidence, in the Appeal Brief, in the Reply Brief, or in the Request for Reconsideration, of specific “structural differences” that result from limitation of a “second leaflet being cut from a second porcine aortic valve”. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974). (“Attorney’s argument in a brief cannot take the place of evidence.”). 3 Appeal 2008-4550 Application 10/752,864 SUMMARY Appellant’s request has been granted to the extent that the decision has been reconsidered, but such request is denied with respect to making any modifications to the decision affirming the examiner's rejection under 35 U.S.C. § 103(a). DENIED cdc DICKE, BILLIG & CZAJA, PLLC Fifth Street Towers, Suite 2250 100 South Fifth Street Minneapolis MN 55402 4