Borck, Alexander et al.

Patent Trials and Appeals Board

Feb 3, 2020

12509831 - (D) (P.T.A.B. Feb. 3, 2020)

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.
12/509,831 07/27/2009 Alexander Borck 4840.85238 1816
24978 7590 02/03/2020
GREER, BURNS & CRAIN, LTD
300 S. WACKER DR.
SUITE 2500
CHICAGO, IL 60606
EXAMINER
EBRAHIM, NABILA G
ART UNIT PAPER NUMBER
1618
NOTIFICATION DATE DELIVERY MODE
02/03/2020 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.
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ALEXANDER BORCK and NINA ADDEN
__________

Appeal 2019-000960
Application 12/509,831
Technology Center 1600
__________

Before FRANCISCO C. PRATS, JEFFREY N. FREDMAN, and
TAWEN CHANG, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 2–7, 10, 13, 14, 16–19, 21, and 22. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

STATEMENT OF THE CASE
The sole rejection before us for review is the Examiner’s rejection of
claims 2–7, 10, 13, 14, 16–19, 21, and 22 under pre-AIA2 35 U.S.C. §

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Biotronik VI Patent AG, Baar
Switzerland, as the real party in interest. Appeal Br. 2.
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103(a) as being unpatentable over Bertsch,3 Rathenow,4 and Carlyle.5 Non-
Final 2–7 (entered March 10, 2017).
DISCUSSION
Issue
As noted above, the Examiner’s obviousness rejection of claims 2–7,
10, 13, 14, 16–19, 21, and 22 over Bertsch, Rathenow, and Carlyle appears
at pages 2–7 of the Non-Final Office Action entered March 10, 2017. See
Non-Final 2–7.
Appellant does not assert error in the Examiner’s characterization of
the teachings in the references. See Appeal Br. generally. Nor does
Appellant assert error in the Examiner’s conclusion that, based on the
teachings in the references, a skilled artisan would have considered the
subject matter recited in the rejected claims obvious. See id.
Rather, in requesting reversal of the Examiner’s obviousness
rejection, Appellant contends that the Bertsch reference applied in the
rejection does not qualify as prior art against the rejected claims under either
pre-AIA 35 U.S.C. § 102(a) or pre-AIA § 102(b). See Appeal Br. 4.

2 The present application has a U.S. filing date of July 27, 2009. See Filing
Receipt 1 (entered August 13, 2009). Accordingly, the pre-AIA versions of
35 U.S.C. §§ 102(b), 103(a), and 119(a) apply to Appellant’s claims. See
the Leahy-Smith America Invents Act (“AIA”), Pub. L. No. 112-29, 125
Stat. 284, § 3(n)(1) (2011). We therefore limit our discussion to the pre-AIA
versions of the statutes.
3 DE 10 2006 042 313 A1 (published Mar. 27, 2008). The Examiner relies
on US 2008/0058923 A1 (published Mar. 6, 2008) as the English language
version of Bertsch. See Appeal Br. 4, n.1.
4 US 2005/0079201 A1 (published Apr. 14, 2005).
5 US 2005/0175667 A1 (published Aug. 11, 2005).
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In particular, Appellant contends, the present application claims
priority under pre-AIA § 119(a) to German application DE 10 2008 040
786.0, which has a filing date of July 28, 2008 (“the German priority
application”). See Appeal Br. 4. Appellant contends that, under pre-AIA
§ 119(a), the filing date of the German priority application should be
considered the effective U.S. filing date of the present application, for
purposes of determining whether prior art is applicable to the present
application under § 102(b). Id. at 5–6.
Thus, Appellant contends, if the present application is entitled to its
priority claim under § 119(a) to the German priority application, then the
Bertsch reference cited by the Examiner is not prior art to the present
application under § 102(b), because the Bertsch reference was published less
than one year before the filing date of the German priority application. See
Appeal Br. 5–6. Moreover, Appellant contends, although the Bertsch
reference might nonetheless be applicable as prior art under § 102(a), the
Borck Declaration6 filed by Appellant establishes that the portions of the
Bertsch reference relevant to the obviousness rejection at issue were not
invented “by another” as required by § 102(a). See id.
The Examiner responds that, regardless of whether Appellant is
granted its priority claim to the German priority application, the Bertsch
reference qualifies as prior art under § 102(b) against the rejected claims
because the Bertsch reference has a publication date more than one year
before the filing date of the present application. See Ans. 4.

6 Declaration of Alexander Borck under 37 C.F.R. § 1.132 (signed April 25,
2016).
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In view of the contentions of the Appellant and the Examiner outlined
above, the critical issue in this case is whether Appellant has established that
the Examiner erred in determining that the Bertsch reference qualifies as
prior art against the rejected claims under § 102(b).
We acknowledge Appellant’s contention that “[a] single issue that is
determinative of this appeal concerns whether or not the present application
is entitled to its priority claim under pre-AIA 35 U.S.C. § 119(a).” Appeal
Br. 3. As evidenced by the discussion above, however, because Appellant
seeks application of § 119(a) in a manner that disqualifies the Bertsch
reference as prior art under § 102(b), the outcome in this case ultimately
depends on whether the Bertsch reference qualifies as prior art under
§ 102(b).
Analysis
Having considered the arguments and evidence advanced by
Appellant and the Examiner, Appellant does not persuade us that the
Examiner erred in determining that the Bertsch reference qualifies as prior
art against the rejected claims under § 102(b).
Pre-AIA 35 U.S.C. § 102(b) states:
A person shall be entitled to a patent unless . . . the
invention was patented or described in a printed publication in
this or a foreign country or in public use or on sale in this
country, more than one year prior to the date of the application
for patent in the United States.
Pre-AIA 35 U.S.C. § 119(a) states (emphasis added):
An application for patent for an invention filed in this
country by any person who has, or whose legal representatives
or assigns have, previously regularly filed an application for a
patent for the same invention in a foreign country which affords
similar privileges in the case of applications filed in the United
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States or to citizens of the United States, or in a WTO member
country, shall have the same effect as the same application
would have if filed in this country on the date on which the
application for patent for the same invention was first filed in
such foreign country, if the application in this country is filed
within twelve months from the earliest date on which such
foreign application was filed; but no patent shall be granted on
any application for patent for an invention which had been
patented or described in a printed publication in any country
more than one year before the date of the actual filing of the
application in this country, or which had been in public use or
on sale in this country more than one year prior to such filing.
In the present case, it is undisputed that the Bertsch reference has a
publication date (March 27, 2008) that is more than one year before the date
the present application was filed in the United States (July 27, 2009). The
Bertsch reference therefore qualifies as prior art against the claims of the
present application under the terms of § 102(b), including in an obviousness
rejection based on § 103(a). Our reviewing court’s predecessor explained as
follows:
The fundamental principle which we discussed and
applied in [In re Foster, 343 F.2d 980 (CCPA 1965)] is that an
inventor is given a grace period of one year, within which to
file his patent application in this country, after the occurrence of
the events named in 35 U.S.C. § 102(b), which events are such
as to make the invention claimed in the application available to
the public in this country. Furthermore, as held in Foster, the
principle, which is intended to prevent dilatory filing, applies
not only to the precise matter disclosed by the events of
§ 102(b) but also to claimed inventions which would be
obvious from the matter disclosed by the events in the sense of
§ 103, to those of ordinary skill in the art as of a date one year
prior to the filing of the U.S. application.
In re Corcoran, 640 F.2d 1331, 1333 (CCPA 1981) (emphasis added); see
also MPEP § 2133.II (citing Foster for the proposition that if a reference has
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an effective date outside the one year § 102(b) grace period, then “the prior
art need not be identical to the claimed invention but will bar patentability if
it is an obvious variant thereof”).
Despite the above-noted directives from Foster, Corcoran, and the
MPEP, Appellant contends that when 35 U.S.C. § 119(a) is read as a whole
(including the exception emphasized above), if a U.S. application is granted
foreign priority under § 119(a), then a reference with a publication date less
than one year before the foreign priority date qualifies as prior art under
§ 102(b) only if the reference anticipates the claims the reference is asserted
against. See Appeal Br. 3–6.
In contrast, Appellant asserts, if a U.S. application is granted foreign
priority under § 119(a), a reference that, as here, merely makes obvious the
claims at issue, qualifies as prior art under § 102(b) only if the reference has
a publication date more than one year before the foreign priority date. See
Appeal Br. 3–6; see also id. at 9 (“To the extent that MPEP §2133.02 II is
interpreted by the Examiner as adding an ‘obviousness’ exception to pre-
AIA §119(a), it conflicts with the statute because the statute only includes
the ‘described in a printed publication’ exception.”).
We do not find Appellant’s contentions persuasive. As Appellant
notes, MPEP § 2133.02.II provides as follows (emphasis added):
A rejection under pre-AIA 35 U.S.C. [§] 102(b) cannot
be overcome by affidavits and declarations under 37 CFR 1.131
(Rule 131 Declarations), foreign priority dates, or evidence that
applicant himself invented the subject matter. Outside the 1-
year grace period, applicant is barred from obtaining a patent
containing any anticipated or obvious claims. In re Foster,
343 F.2d 980, 984 . . . .
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Consistent with the MPEP’s directive that a foreign priority claim
cannot overcome an obviousness rejection based on a reference that qualifies
as prior art under § 102(b), our reviewing court’s predecessor explained that
pre-AIA § 119(a) relates “only to what an applicant or patentee may and
may not do to protect himself against patent-defeating events occurring
between his invention date and his U.S. filing date.” In re Hilmer, 424
F.2d 1108, 1112 (CCPA 1970) (emphasis added).
In the present case, as explained in Hilmer, Appellant’s earliest
possible invention date is the filing date of Appellant’s German priority
application (July 28, 2008). See Hilmer, 424 F.2d at 1112 (“[E]xcept as
provided by § 119, an applicant or patentee may not establish a date of
invention by reference to knowledge or use thereof, or other activity in a
foreign country.” (internal quotations omitted)).
As noted above, however, it is undisputed that the Bertsch reference
(published March 27, 2008) has a publication date before the July 28, 2008,
filing date of Appellant’s German priority application. Therefore, the March
27, 2008, publication of the Bertsch reference is not a patent-defeating event
that occurred between Appellant’s earliest possible invention date (the July
28, 2008 filing date of the German priority application) and its U.S. filing
date (July 27, 2009), but rather was published before Appellant’s earliest
possible invention date.
Because the publication of the Bertsch reference is not a patent-
defeating event that occurred between Appellant’s earliest possible invention
date and its U.S. filing date, Appellant does not persuade us that its priority
claim under § 119(a) disqualifies the Bertsch reference as prior art against
the rejected claims of the present application. See Hilmer, 424 F.2d at 1112.
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To the contrary, because the Bertsch reference was published (March 27,
2008) more than one year before the present application was filed in the
United States (July 27, 2009), we agree with the Examiner that the Bertsch
reference qualifies as prior art against the claims of the present application
under pre-AIA § 102(b).
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in determining that the Bertsch reference qualifies as
prior art against the present claims under § 102(b), even assuming that
Appellant is granted foreign priority to the German priority application
under § 119(a). Accordingly, on the current record, each of the Bertsch,
Rathenow, and Carlyle references cited in the Examiner’s obviousness
rejection of claims 2–7, 10, 13, 14, 16–19, 21, and 22 qualifies as prior art
against those claims.
Because Appellant does not assert error in the Examiner’s conclusion
that, based on the teachings in the Bertsch, Rathenow, and Carlyle, a skilled
artisan would have considered the subject matter recited in claims 2–7, 10,
13, 14, 16–19, 21, and 22 obvious, we affirm the Examiner’s rejection of
claims 2–7, 10, 13, 14, 16–19, 21, and 22 over Bertsch, Rathenow, and
Carlyle.

CONCLUSION
In summary:
Claims Rejected 35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
2–7, 10, 13, 14,
16–19, 21, 22
103(a) Bertsch, Rathenow,
Carlyle
2–7, 10, 13, 14,
16–19, 21, 22

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED