Ex Parte Hissink et al

Patent Trials and Appeals Board

Jul 9, 2019

14695174 - (D) (P.T.A.B. Jul. 9, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/695,174 04/24/2015
27305 7590 07/11/2019
HOW ARD & HOW ARD ATTORNEYS PLLC
450 West Fourth Street
Royal Oak, MI 48067
FIRST NAMED INVENTOR
Catharina Everdina His sink
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
060210.00569 7686
EXAMINER
BREDEFELD, RACHAEL EV A
ART UNIT PAPER NUMBER
1611
NOTIFICATION DATE DELIVERY MODE
07/11/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
IPDocket@HowardandHoward.com
dtrost@HowardandHoward.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CATHARINA EVERDINA HISSINK,
THEODORUS ADRIANUS CORNELIUS FLIPSEN,
JOHAN ZUIDEMA, and LINDA JOAN GIBCUS
Appeal2019-000897
Application 14/695,174
Technology Center 1600
Before JEFFREY N. FRED MAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134(a) involving claims to a
hydrophilic biodegradable foam. The Examiner rejected the claims as
obvious and indefinite. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm but designate our affirmance as a new ground of rejection.
1 Appellants identify the Real Party in Interest as Stryker European Holdings
I, LLC (see App. Br. 1 ).
2 We have considered and herein refer to the Specification of Apr. 24, 2015
("Spec."); Final Office Action of Sept. 8, 2017 ("Final Act."); Appeal Brief
of Feb. 14, 2018 ("App. Br."); Examiner's Answer of Sept. 12, 2018
("Ans."); and Reply Brief of Nov. 9, 2018 ("Reply Br.").
Appeal2019-000897
Application 14/695,174
Statement of the Case
Background
"The need for synthetic absorbable sponges or absorbent foams that
can be left in the wound is now well recognized" (Spec. 3: 19-20).
Requirements of such foams are a) a high (fluid) absorption
capacity, particularly for blood, b) rapid absorption of fluid, c)
strength to be readily handled in surgical procedures, d)
conformable so as to fit into any topography or space, e)
maintenance of mechanical properties, such as resilience, for a
specific period of time during or after surgery or after
application of the foam, and f) soft so as to avoid injury to
sensitive tissues.
(Spec. 3 :20-26). "[T]he foam of the invention is comprised of an
amorphous hydrophilic soft segment or phase and a crystalline hard segment
or phase" (Spec. 4:23-24). "The presence of hydrophilic segment or group
in the amorphous phase of the polymer ... provides said foam with required
characteristics such as the capacity to absorb aqueous liquids and being
readily biodegradable" (Spec. 4:27-30). "[T]he crystalline hard segment or
phase must provide the foam with rigidity, keep the foam intact and prevent
swelling of the foam when placed in contact with fluids" (Spec. 5:4-6).
The Claims
Claims 1, 7-9, 12-15, 17, 18, 20-25, and 27-30 are on appeal.
Independent claim 17 is representative and reads as follows:
17. Biodegradable absorbent foam, suitable for packing
antrums or other cavities of a human or animal body,
compnsmg
a phase-separated polymer including an amorphous
segment and a crystalline segment, said polymer having the
formula:
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wherein the amorphous segment comprises R,
R is selected from one or more aliphatic polyether esters
or polyanhydrides,
at least one R comprises a hydrophilic segment selected
from the group consisting of polyether, polypeptide,
poly(vinylalcohol), poly(vinylpyrrolidone ), and
po 1 y(hydroxymethy lmethacry late),
R' and R" are independently C2-Cs alkylene, optionally
substituted with C1-C10 alkyl or C1-C10 alkyl groups substituted
with protected S, N, P or O moieties and/or comprising S, N, P
or O in the alkylene chain;
Z1-Z4 are each urethane,
Q1 and Q2 are independently urea, urethane, amide,
carbonate, ester or anhydride,
n is an integer from 5-500, and
p and q are both 1.
The Re} ections
A. The Examiner rejected claims 1, 7-9, 12-15, 17, 18, 20-25, and
27-30 under 35 U.S.C. § 112, second paragraph for being indefinite (Final
Act. 3-4).
B. The Examiner rejected claims 17, 18, 20, 23-25, and 27 under
35 U.S.C. § 103(a) as obvious over W0'491 3 and Spaans4 (Final Act. 5-8).
3 Spaans et al., WO 99/64491 Al, published Dec. 16, 1999.
4 Spaans et al., US 2001/0043913 Al, published Nov. 22, 2001.
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C. The Examiner rejected claims 1, 7-9, 12-15, 17, 18, 20-25, 27,
and 28 under 35 U.S.C. § 103(a) as obvious over W0'491, Spaans, and
Cohn5 (Final Act. 8-12).
D. The Examiner rejected claims 1, 7-9, 12-15, 17, 18, 20-25, and
27-30 under 35 U.S.C. § 103(a) as obvious over W0'491, Spaans, Cohn,
and Evans6 (Final Act. 12-13).
A. 3 5 U.S. C. 112, second paragraph
The Examiner finds indefinite the phrase "R' and R" are
independently C2-Cs alkylene, optionally substituted with C1-C10 alkyl or
C1-C10 alkyl groups substituted with protected S, N, P or O moieties and/or
comprising S, N, P or O in the alkylene chain" (Final Act. 3). The Examiner
finds "the 'comprising' language in the above limitations is open-ended and
the metes and bounds of the limitations are unclear. It is not clear what else
the alkylene groups could comprise (i.e., more carbon atoms outside the
range)" (id.).
Appellants contend "a person of ordinary skill in the art would readily
understand the claimed limitation, particularly in view of the specification
(see Page 5, lines 20-23; and Page 26, lines 20-23)" (App. Br. 21 ).
Appellants contend that the term "comprising" allows for inclusion of
additional atoms in the alkylene chain, e.g., heteroatoms that are not S, N, P,
or 0. See App. Br. 22. Appellants contend "inclusion of additional carbon
atoms in the alkylene chain of the of the C3 alkyl group such that the number
of carbon atoms exceeds the C1-C10 range ( e.g. 1000 carbon atoms) would
5 Cohn et al., EP 0295055 A2, published Dec. 14, 1988.
6 Evans et al., US 2003/0236573 Al, published Dec. 25, 2003.
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be understood by a person of ordinary skill in the art to be outside the C1-
C10 range and therefore not within the scope of claims 1 and 17" (id.).
We are persuaded by Appellants' argument. The plain meaning of the
claim does not allow for more carbon atoms outside the claimed range. We
reverse this rejection.
B.-D. Obviousness
Because the same issue of the combining the prior art is relevant to
each of these rejections, we will consider these rejections together.
The Examiner finds "WO' 491 teaches biomedical polyurethanes and
their use as porous shaped, biodegradable implants" (Final Act. 5). The
Examiner finds W0'491 teaches a "50/50 E-caprolactone/L-lactide
prepolymer initiated with butanediol and extended with BDI-BDO-BDI-
BDO-BDI" wherein BDI is 1,4-butanediisocyanate and BDO is 1,4-
butanediol (id.). The Examiner finds the synthesis results in "a polymer
meeting all the limitations recited in instant claims 17 and 24 ... with the
only difference being that W0'491 does not explicitly teach its
polyurethanes have an amorphous segment that comprises a hydrophilic
segment selected from ... polyether" (Final Act. 5-6).
The Examiner finds Spaans teaches "macroporous biomedical
polyurethane-amide based materials" including a soft polyester phase.
(Final Act. 6). The Examiner finds Spaans teaches "[ s Jui table preferred
monomers for the polyester are equimolar amounts of E-caprolacton[ e] and
L-lactide (paragraph 0036) and suitable diisocyanates include small blocks
of diisocyanate terminated diol (BDl-butanediol-BDI) (paragraph 0038)"
(id.). The Examiner finds the "polyester can also be combined with a
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polyol, such as a polyether-polyol, in order to modify the properties thereof
(biodegradability, phase separation, hydrophilicity, mechanical properties,
etc.). Preferably low molecular weight polyols are used (MW from 500-
3000, based on ethylene and/or propylene glycol)" (id.). The Examiner
concludes:
[I]t would have been obvious to an artisan of ordinary skill at
the time the invention was made to include polyethylene glycol
(polyether) ... in the polyester segments ofW0'491 's
polyurethanes. A skilled artisan would have been motivated to
do so since Spaans et al teach low molecular weight glycols can
be combined with its polyesters to modify properties such as
biodegradability, phase separation, hydrophilicity, and
mechanical properties.
(Final Act. 6).
The issue with respect to this rejection is: Does a preponderance of the
evidence of record support the Examiner's conclusion that the prior art
renders the claims obvious?
Findings of Fact ("FF'')
1. W0'491 teaches biomedical polyurethanes "processed into porous
shaped bodies, e.g., as implants" (W0'491 1:18-20).
2. W0'491 teaches "porous 50/50 copoly(E-caprolactone/L-lactide)
materials were used for the reconstruction of meniscal lesions ....
[H]owever ... the degradation rate was somewhat too high. New meniscal
tissue, the so called fibrocartilage, is formed after an induction time of 10 to
20 weeks" (W0'491 1:21-32).
3. W0'491 teaches "[a]n important feature of these polyurethanes is that
they owe their good mechanical properties to the phase separated
morphology. Because the soft segments ( e.g. polyesters, polycarbonates or
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polyethers) are chemically incompatible with the hard segments (urethane,
urea or amide moieties) phase separation occurs" (W0'491 4:11-16).
4. W0'491 teaches a polyurethane formed by chain-extending a
polycaprolactone (50/50 L-lactide and E-caprolactone) with a BDI-BDO-
BDI-BDO-BDI block (see W0'491 8:26-33; 11:3-6).
5. Spaans teaches "macroporous biomedical polyurethane-amide based
materials, having good mechanical properties, that can be prepared by an
easy in-situ foam generating process" (Spaans ,-J 22).
6. Spaans teaches the material "is applicable to various types of implants
in the human or animal body, such as for meniscal reconstruction, but also
for other types of implants, including artificial skin, nerve guides, vascular
prostheses and medical devices such as wound dressings" (Spaans ,-J 31 ).
7. Spaans teaches:
The nature of the application determines the level of
biodegradability, which is mainly determined by the nature of
the polyester prepolymer. Generally a material is considered
biodegradable in case it degrades into non-toxic components
within a reasonable period of time. Degradation can be
determined by following the mechanical properties of the
material as function of the time. For meniscal repair material it
is preferred that the mechanical properties as indicated earlier,
are maintained for a certain period of time, for example at least
three months, following which they start to drop.
(Spaans ,-J 32).
8. Spaans teaches "the polyurethane of the invention comprises in the
most general form chain extended isocyanate terminated polyester
prepolymer units, the said chain extension being based on least one
dicarboxylic acid or a hydroxy-carboxylic acid, resulting in urethaneamide
segments" (Spaans ,-J 33).
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9. Spaans teaches the material may include a linear random copolyester
having about equimolar amounts of E-caprolactone and L-Lactide,
endcapped with isocyanate terminated materials, such as diisocyanate
terminated diol (BDI-butanediol-BDI) (Spaans ,i,i 36, 38).
10. Spaans teaches:
It is possible to combine the polyester with a polyol, such as a
polyether-polyol, in order to modify the properties thereof
(biodegra[ da ]bility, phase separation, hydrophilicity,
mechanical properties). This polyol may either be included in
the polyester itself, or may be mixed with the polyester, prior to
endcapping. Preferably low molecular weight polyols are used
(Mw from 500 to 3000, based on ethylene and/or propylene
glycol).
(Spaans ,i 39).
11. Cohn teaches polymeric materials for bioabsorbable surgical articles
including sutures, vascular grafts, wound and bum coverings, textile
structures, and other forms of support (Cohn Abst.; 3:60-65).
12. Cohn teaches the polymeric materials include "multiblock copolymers
obtained through the polyesterification of[] a-hydroxycarboxylic acid in the
presence of hydroxyl-ended poly(alkylene glycol) chains of various
molecular weights .... A preferred poly(alkylene glycol) is poly( ethylene
glycol), preferably in the 600-6000 molecular weight range" (Cohn 3:53-
57).
13. Cohn teaches polyethylene glycol-lactic acid block copolymers
containing 18-71 % polyethylene glycol (Cohn 10:5-45, Table I).
14. Cohn teaches "the developed copolymers ... show a substantial
decrease in stiffness and a large increase in the elongation at break. Of
special interest were highly flexible PELA polymers, exhibiting an
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elastomeric-like behavior, with a modulus of 5 MPa and elongation at break
of900%" (Cohn 10:53-57).
15. Evans teaches an implant "comprising collagen and other bio-
resorbable materials, where the implant may also be used for therapy
delivery" (Evans, Abst.).
16. Evans teaches the implant "is generally fabricated from one or more
biocompatible materials ( e.g. polymer)" and "may contain a depot of
material (e.g., calcium salts, collagens, cytokines, drugs, etc.) for assisting
the in-growth of cells and act as a carrier for other constituents" (Evans ,-J
80).
Principles of Law
"In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. What matters is the objective reach of the claim. If the
claim extends to what is obvious, it is invalid under § 103." KSR Int 'l Co. v.
Teleflex Inc., 550 U.S. 398,419 (2007).
Analysis
We adopt the Examiner's findings of fact and conclusion of law
(Final Act. 5-13; FFs 1-16), and agree that the combination ofW0'491,
Spaans, Cohn, and Evans renders the claims obvious. However, as our
reasoning differs with respect to claims 18 and 21, we designate our
affirmance as a new ground of rejection.
We address Appellants' arguments below.
Claims 17, 20, 23-25, and 27: W0'491 and Spaans
Appellants contend "[i]nclusion of the hydrophilic segment of Spaans
'914 in the polyurethane implant of [W0'491] would render the implant of
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[WO' 491] inoperable as a nerve guide, meniscal reconstruction material,
artificial skin and/or artificial vein because the resultant implant would
degrade too quickly" (App. Br. 9, emphasis omitted). Appellants contend
"in order for the polyurethane implant to be suitable as a nerve guide, etc.,
the implant of [WO' 491] must have a degradation rate suitable for
fibrocartilage induction ... [ and] cannot degrade more quickly than 10
weeks or it would be inoperable for its intended purpose" (App. Br. 10).
Appellants contend that "in the context of the implant of [W0'491], the
inclusion of a hydrophilic segment such as the polyether of Spaans '913
would necessarily lead to 1) the implant degrading more quickly than the
intended 10 to 20 weeks required for fibrocartilage induction; and 2)
increased swelling of the implant" (App. Br. 11 ).
We do not find this argument persuasive because nothing in the prior
art teaches that the proposed modification would have resulted in an
"inoperable" biodegradable foam or a phase-separated polymer with
undesirable properties. See In re Urbanski, 809 F.3d 1237, 1244 (Fed. Cir.
2016). Spaans teaches that phase-separated polyurethane-amide-polyesters
are applicable to various types of implants, including meniscal implants,
nerve guides, and wound dressings (FF 6). Spaans teaches the nature of
application determines the level of biodegradability (FF 7). Spaans teaches
that biodegradability is determined by the polyester, and that a polyol may
be added to the polyester to modify biodegradability and hydrophilicity (FFs
7, 10). W0'491 and Spaans suggest that the combination of crystalline
polyurethane and amorphous polyester-polyol can be varied in order to
adjust the properties of the biodegradable implant. See Urbanski, 809 F.3d
at 1242. Here, we conclude that one of ordinary skill in the art would have
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had a reason to modify the biodegradability of the implant depending on the
nature of the application, e.g., as a wound dressing rather than a meniscal
reconstruction material.
Appellants contend "that one of ordinary skill in the art could not
combine the teachings of [W0'491] and [Spaans] with any degree of
predictability and would therefore not combine the teachings with a
reasonable expectation of success" (App. Br. 16). Appellants contend that
"[W0'491] discloses a polyurethane implant comprising a urethane-based
hard segment and polyester-based soft segment" in contrast to Spaans'
"polymer having urethane-amide-based hard segments" (App. Br. 14-15).
Appellants contend "because the polyurethane implant of [W0'491] does
not contain urethane-amide hard segments, one of ordinary skill in the art
would readily understand that the teachings of Spaans '913 pertaining to the
inclusion of a hydrophilic segment are not applicable to the implant of
[W0'491]" (App. Br. 16).
We find this argument unpersuasive because "obviousness cannot be
avoided simply by a showing of some degree of unpredictability in the art so
long as there was a reasonable probability of success." Pfizer, Inc. v.
Apotex, Inc., 480 F.3d 1348, 1364 (Fed. Cir. 2007). Both W0'491 and
Spaans are directed to biodegradable implants made of phase-separated
polymers incorporating polyurethane and polyester-based segments.
Indeed, Spaans expressly cites to W0'491 (see Spaans ,-J,-J 20, 21) and
describes modifying the phase-separated polymer to provide improved
implants (see FFs 5, 7). Spaans teaches predictable modifications to
biodegradability by modifying the polyester, including combining the
polyester with a polyol (FFs 7, 10). Because the combination ofW0'491
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and Spaans is "the predictable use of prior art elements according to their
established functions," we are not persuaded that the Examiner erred in
concluding that claims 17, 20, 23-25, and 27 are unpatentable over the prior
art. See KSR, 550 U.S. at 417.
Claims 1, 7-9, 12-15, 22, and 28: W0'491, Spaans, and Cohn
The Examiner finds "W0'491 does not explicitly teach its
polyurethanes have an amorphous segment that comprises polyethylene
glycol in a content of 1-80 wt% and a number average molecular weight of
150 to 4000 g/mol" (Final Act. 8-9). The Examiner finds "[ o ]ne would have
been motivated to incorporate polyethylene glycol at a molecular weight of
500-3000 since Spaan et al similar polyurethanes as discussed in W0'491
used for the same purpose" (Final Act. 9). The Examiner finds "[a] skilled
artisan would [] have a reasonable expectation of success to add the amounts
of polyethylene glycol disclosed in Cohn et al depending on the desired
flexibility and elastomeric behavior ofW0'491 's polyurethanes" (Final Act.
10).
Appellants repeat their arguments as to the combination ofW0'491
and Spaans, discussed with respect to claims 17, 20, 23-25, and 27 (App.
Br. 17). Appellants contend "Cohn teaches a poly( a-hydroxy-carboxylic
acid)/poly( oxyalkylene) (hereinafter 'PELA') polymer and not a
polyurethane" (App. Br. 18). Appellants contend "the PELA polymer of
Cohn does not even contain any hard segments as described in [WO' 491] or
Spaans '913 because the poly( a-hydroxy-carboxylic acid) segment is a
polyester (i.e., a soft segment, as described in [W0'491] and Spaans '913)
and not a polyurethane" (id.). Appellants contend "[b Jecause Cohn has no
such hard segments, the teachings of Cohn provide no degree of
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predictability regarding how the incorporation of PEG in particular amounts
will impact the polyurethane implant of [W0'491]" (id.).
We find Appellants' argument unpersuasive because "[n]on-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. . . . [The reference] must be read, not in isolation, but for what it
fairly teaches in combination with the prior art as a whole." In re Merck &
Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Here, Cohn teaches molecular
weights and amounts of PEG for use in biodegradable implants in
combination with W0'491 and Spaans (see FFs 11-13). The PEG is
incorporated into a lactic-acid containing polyester, similar to that of
W0'491 and Spaans (see FFs 2, 4, 9). Spaans teaches the predictable effects
of adding PEG, with a similar molecular weight, to the polyurethane-
polyester implant ofW0'491 to modify the properties of biodegradability,
phase separation, hydrophilicity, and mechanical properties (FF 10).
Accordingly, as discussed above, the combined prior art teaches the
predictable use of prior art elements according to their established functions,
and we are not persuaded that the Examiner erred in concluding claims 1, 7-
9, 12-15, and 28 are unpatentable over the prior art.
Claims 18 and 21
Appellants contend "[t]he Examiner has not cited any disclosure in
any reference that describes a fragmentation time of 1 to 10 days" as recited
by claims 18 and 21 (App. Br. 12). Appellants contend "one of ordinary
skill in the art would not be able to predict to any degree whether the PEG of
Spaans '913 would impact the degradation time of the polyurethane implant
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of [WO' 491] to the amount necessary for a complete fragmentation time of
1 to 10 days" (App. Br. 13).
The Examiner finds that, with respect to claims 18 and 21, limitations
directed to the foam's fragmentation time "would naturally flow from all the
suggested features ofW0'491 's polyurethanes and polyethers discussed in
Spaans et al and therefore, would be obvious" (Final Act. 7, 11).
We do not agree with the Examiner's reasoning. As shown by
Appellants' Specification and the prior art, phase-separated polymers that
would have been obvious do not necessarily possess the characteristics of
the claimed product, e.g., a fragmentation time of 1-10 days.
Although the prior art does not teach the claimed fragmentation time,
the prior art does teach the general conditions of the claims. See In re Aller,
220 F.2d 454,456 (CCPA 1955). Particularly, Spaans teaches "[t]he nature
of the application determines the level of biodegradability," which in tum is
determined by the polyester prepolymer as modified by the polyether-polyol
(FFs 7, 8, 10). Spaans teaches "a material is considered biodegradable in
case it degrades ... within a reasonable period of time" and that the material
may be used as a wound dressing (FFs 6, 7). Accordingly, Spaans suggests
preparing a material for a wound dressing that degrades within a reasonable
period of time for a wound dressing as opposed to a meniscal repair implant.
Because Spaans teaches the modifications that would have been within the
capabilities of one skilled in the art, discovering the optimum or workable
ranges of biodegradability for a wound dressing by routine experimentation
is not inventive. Aller, 220 F.2d at 456.
Here, Appellants do not distinguish the claimed polymer from those in
the prior art. Appellants have not established any criticality between the
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claimed combination of components of the polymer and the fragmentation of
the foam. See Aller, 220 F.2d at 456. Appellants have not established that
the fragmentation time of the claimed polymer is different in kind and not
merely in degree from the prior art polymer. See id. Accordingly, we
conclude that Appellants have not overcome prima facie obviousness in
view of the prior art.
Because our reasoning differs from that of the Examiner, we designate
our affirmance as a New Ground of Rejection to provide Appellants a fair
opportunity to address these teachings and new position.
Claims 29 and 30: WO '491, Spaans, Cohn, and Evans
Appellants contend that "Evans fails to disclose a phase-separated
polymer of formula (I)" (App. Br. 19). Appellants contend "[b Jecause
Evans fails to disclose a phase-separated polymer including an amorphous
segment and a crystalline segment, Evans cannot cure the deficiencies of
[W0'491], Spaans '913, and Cohn described above" (App. Br. 19-20).
We find Appellants' argument unpersuasive as it addresses Evans
individually, and not the prior art as a whole. As discussed above, the
combination ofW0'491, Spaans, and Cohn teaches the phase-separated
polymer of claim 1, from which claims 29 and 30 depend. Evans teaches a
biodegradable implant containing a drug substance or a collagen ( a
hemostatic component) (FFs 15, 16). We agree with the Examiner that:
A skilled artisan would have been motivated to [include a drug
or hemostatic component] since Evans et al suggest the addition
of drugs and collagen would assist the in-growth of cells within
polymeric implants and thus, a skilled artisan would have a
reasonable expectation that such benefits would also apply to
the biomedical implants of WO' 491
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(Final Act. 13). Accordingly, the combined prior art teaches the predictable
use of prior art elements according to their established functions, and we are
not persuaded that the Examiner erred in rejecting claims 29 and 30.
Conclusion of Law
A preponderance of the evidence of record support the Examiner's
conclusion W0'491, Spaans, Cohn, and Evans render the claims obvious.
SUMMARY
In summary, we reverse the rejection of claims 1, 7-9, 12-15, 17-18,
20-25, and 27-30 under 35 U.S.C. § 112, second paragraph as being
indefinite.
We affirm the rejection of claims 17, 18, 20, 23-25, and 27 under 35
U.S.C. § 103(a) over W0'491 and Spaans.
We affirm the rejection of claims 1, 7-9, 12-15, 21, 22, and 2 8 under
35 U.S.C. § 103(a) over W0'491, Spaans, and Cohn.
We affirm the rejection of claims 29 and 30 under 35 U.S.C. § 103(a)
over W0'491, Spaans, Cohn, and Evans.
Because we rely on an optimization rationale that was not relied upon
by the Examiner, we designate our affirmance as a new ground pursuant to
37 C.F.R. § 41.50(b). Section 41.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
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(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED; 37 C.F.R. § 41.50(b)
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