Ex parte BLOM et al.

Board of Patent Appeals and Interferences

Jul 31, 1998

08408225 (B.P.A.I. Jul. 31, 1998)

Application for patent filed March 22, 1995. According1
to appellants, the application is a continuation-in-part of
Application 08/143,835, filed October 27, 1993, abandoned;
which is a division of Application 07/818,853, filed January
10, 1992, now Patent No. 5,300,119, issued April 5, 1994.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 19
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte ERIC D. BLOM,
GREGORY CHERNOFF
and
DANIEL W. KARAKLA
_____________
Appeal No. 97-3294
Application 08/408,2251
______________
ON BRIEF
_______________
Appeal No. 97-3294
Application 08/408,225
We note that the present application, indicated to be a2
division of application Serial No. 07/818,853 that matured
into U.S. Patent No. 5,300,119, includes a TERMINAL DISCLAIMER
(Paper No. 8) based upon the specified patent.
2
Before STONER, Chief Administrative Patent Judge, and CALVERT
and COHEN, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims
1 through 6 and 14 through 16, all of the claims remaining in
the application. 2
Appellants’ invention pertains to a device for
insertion into an opening of a human body. An understanding
of the invention can be derived from a reading of exemplary
claims 1 and 14, copies of which appear in the APPENDIX to
appellants’ main brief (Paper No. 15).
As evidence, the examiner has applied the document
listed below:
Blom et al. (Blom) 4,911,716 Mar. 27, 1990
A reference of record in this application, applied
in a new ground of rejection, infra, is:
Friese 4,610,659 Sep. 9, 1986
Appeal No. 97-3294
Application 08/408,225
3
The following rejections are before us for review.
Claim 6 stands rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1 through 5 and 14 through 16 stand rejected
under 35 U.S.C. § 102(b) as being anticipated by Blom.
Claim 6 stands rejected under 35 U.S.C. § 103 as
being unpatentable over Blom.
The full text of the examiner's rejections and
response to the argument presented by appellants appears in
the answer (Paper No. 16), while the complete statement of
appellants’ argument can be found in the main and reply briefs
(Paper Nos. 15 and 17).
OPINION
Appeal No. 97-3294
Application 08/408,225
We understand the recitation of “apparatus” in dependent3
claims 2 through 5 and claims 15 and 16 to correspond to the
“combination” of respective parent claims 1 and 14. The noted
language should be made consistent during any further prosecu-
tion before the examiner.
In our evaluation of the applied patent, we have consid-4
ered all of the disclosure thereof for what it would have
fairly taught one of ordinary skill in the art. See In re
Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966). Addi-
tionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
4
In reaching our conclusion on the issues raised
in this appeal, this panel of the board has carefully con-
sidered appellants’ specification and claims, the applied 3
patent, and the respective viewpoints of appellants and the4
examiner. As a consequence of our review, we make the
determinations which follow.
The indefiniteness issue
We reverse the examiner’s rejection of claim 6 under
35 U.S.C. § 112, second paragraph, as being indefinite.
Appeal No. 97-3294
Application 08/408,225
5
A consideration of the content of parent claim 1 and
claim 6 reveals to us that the subject matter of claim 6 is
definite in meaning, i.e., the metes and bounds of the claimed
subject matter is determinable, as explained below.
Claim 1 is drawn to a combination. As set forth
in claim 1, the combination includes a defined device and a
retainer. No language is present in claim 1 reflecting that
the combination is restricted exclusively to the device and
retainer. Thus, the language in dependent claim 6, i.e,
“[t]he
combination of claim 1 further comprising an instrument”,
simply and clearly sets forth, from our perspective, the
instrument as an additional entity of the open-ended
combination of claim 1. Accordingly, we perceive claim 6 to be
readily understandable and, hence, definite under 35 U.S.C. §
112, second paragraph.
The anticipation issue
Appeal No. 97-3294
Application 08/408,225
6
We reverse the rejection of claims 1 through 5 and
16 under 35 U.S.C. § 102(b), but affirm the rejection of
claims 14 and 15 on the same ground.
Claims 1 through 5
Independent claim 1 requires, inter alia, a device
body having a flexible first flange provided “on an outside
surface of the device body,” with the first flange having a
deployed, use orientation in which it “projects generally
outwardly from the outside surface of the device body.”
It is apparent to us that one versed in the art
would fairly appreciate the diamond shaped esophageal end 404
of
the helical coil spring implant 400 of Blom (Figs. 12 through
15) as a flange-like structure relative to the remaining
portion of the coil spring. Nevertheless, we find ourselves
in accord with
appellants’ view that the teaching of Blom does not address a
flange “provided on an outside surface” of a device body, as
Appeal No. 97-3294
Application 08/408,225
7
expressly set forth in claim 1. More specifically, we
understand the noted diamond shaped esophageal end of the
implant of Blom as a deformed coil that simply follows
uniform coils of the main implant body. Accordingly, it is
the viewpoint of this panel of the board that this deformed
coil (flange-like structure) at the end of a coil spring
cannot be said to be “provided on an outside surface”
(underlining added for emphasis) of a device body, as now
claimed. Accordingly, the rejection of claims 1 through 5 is
reversed.
Claims 14 and 15
Claim 14 requires, inter alia, a device including a
resiliently deflectable device body having an insertion cross
section transverse to its longitudinal extent which is
insufficient to fill an opening in a human body and a larger
use cross section transverse to its longitudinal extent, and a
retainer removable to permit deployment of the device body to
its use cross section. Claim 15 specifies the retainer as
being soluble in a fluid.
Appeal No. 97-3294
Application 08/408,225
8
The law of anticipation does not require that a
reference teach specifically what an appellant has disclosed
and is claiming but only that the claims on appeal "read on"
something disclosed in the reference, i.e., all limitations of
the claim are found in the reference. See Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983); cert. denied, 465 U.S. 1026 (1984).
With the above in mind, we conclude that the content
of claims 14 and 15 reads on the teaching of Blom. In
particular, and using the language of appellants’ claims, we
recognize the esophageal end 402 of Blom as a resiliently
deflectable device body having an insertion cross section
(Figure 14) which is insufficient to fill the esophagus (an
opening in a human body) and having a larger use cross section
(Fig. 15); the retainer 416 being soluble in fluid (column 10,
lines 10 through 12), i.e., the retainer is removable. In
light of the above, we affirm the rejection of claims 14 and
15 under 35 U.S.C. § 102(b).
The argument advanced by appellants does not
persuade us as to the patentability of claims 14 and 15.
Appeal No. 97-3294
Application 08/408,225
9
Contrary to the view set forth in the main brief (pages 12,
13, 19 and 20), we determined, supra, that the content of
claims 14 and 15 was anticipated by the Blom patent.
Claim 16
We reverse the rejection of claim 16, a claim
requiring means for introducing fluid into contact with a
retainer soluble in fluid. Blom discloses the dissolving of
half of a gelatin capsule (retainer) 416 upon contact with
saliva and mucus, i.e., naturally occurring body fluids.
Simply stated, we discern no teaching in Blom of a distinct
structure that would be encompassed by the means for
introducing a fluid into contact with the retainer, as
specified by claim 16.
The obviousness issue
We reverse the rejection of claim 6 under 35 U.S.C.
§ 103.
Appeal No. 97-3294
Application 08/408,225
10
At the outset, we, of course, keep in mind that the
burden is on the Patent and Trademark Office to establish a prima
facie case of obviousness. See In re Fine, 837 F.2d 1071,
1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). Evidence provides
the basis for a determination that claimed subject matter is
unpatentable under 35 U.S.C. § 103. In the circumstance of
claim 6, a conclusion of obviousness is made by the examiner
relative to a specifically disclosed (specification, pages 9
and 10, and Figs. 8 through 10) and claimed instrument (tube
80) without
any evidence whatsoever being relied upon. Lacking evidence
of obviousness, we are constrained to reverse the rejection of
claim 6.
New ground of rejection
Under the authority of 37 CFR § 1.196(b), we
introduce the following new ground of rejection.
Appeal No. 97-3294
Application 08/408,225
The Friese reference was listed on appellants’ “INFORMA-5
TION DISCLOSURE STATEMENT” (Paper No. 3).
11
Claim 14 is rejected under 35 U.S.C. § 102(b) as
being anticipated by Friese.5
The content of claim 14 is readable upon a typical
tampon pack, e.g., the tampon packs as disclosed in the Friese
document.
In summary, this panel of the board has:
reversed the rejection of claim 6 under 35 U.S.C.
§ 112, second paragraph, as being indefinite;
reversed the rejection of claims 1 through 5 and 16
under 35 U.S.C. § 102(b) as being anticipated by Blom, but
affirmed the rejection of claims 14 and 15 on the same ground;
and
reversed the rejection of claim 6 under 35 U.S.C. §
103 as being unpatentable over Blom.
Appeal No. 97-3294
Application 08/408,225
12
Additionally, we have introduced a new ground of
rejection for claim 14 pursuant to our authority under 37 CFR
§ 1.196(b).
The decision of the examiner is affirmed-in-part.
In addition to affirming the examiner’s rejection
of one or more claims, this decision contains a new ground of
rejection pursuant to 37 CFR § 1.196(b) (amended effective
Dec. 1, 1997, by final rule notice, 62 Fed. Reg. 53,131,
53,197 (Oct. 10, 1997), 1203 Off. Gaz. Pat. & Trademark Office
63, 122 (Oct. 21, 1997)). 37 CFR § 1.196(b) provides that
“[a] new ground of rejection shall not be considered final for
purposes of judicial review.”
Regarding any affirmed rejection, 37 CFR § 1.197(b)
provides:
(b) Appellant may file a single request for
rehearing within two months from the date
of the original decision. . . .
37 CFR § 1.196(b) also provides that the appellants,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exer-
cise one of the following two options with respect to the new
Appeal No. 97-3294
Application 08/408,225
13
ground of rejection to avoid termination of proceedings (37
CFR § 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of
the claims so rejected or a showing of
facts relating to the claims so rejected,
or both, and have the matter reconsidered
by the examiner, in which event the
application will be remanded to the
examiner. . . .
(2) Request that the application be
reheard under § 1.197(b) by the Board of
Patent Appeals and Interferences upon the
same record. . . .
Should the appellants elect to prosecute further
before the Primary Examiner pursuant to 37 CFR § 1.196(b)(1),
in order to preserve the right to seek review under 35 U.S.C.
§§ 141 or 145 with respect to the affirmed rejection, the
effective date of the affirmance is deferred until conclusion
of the prosecution before the examiner unless, as a mere
incident to the limited prosecution, the affirmed rejection is
overcome.
If the appellants elect prosecution before the
examiner and this does not result in allowance of the
application, abandonment or a second appeal, this case should
be returned to the Board of Patent Appeals and Interferences
Appeal No. 97-3294
Application 08/408,225
14
for final action on the affirmed rejection, including any
timely request for rehearing thereof.
No time period for taking any subsequent action in
con-nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED-IN-PART
37 CFR § 1.196(b)
BRUCE H. STONER, JR. )
Chief Administrative Patent Judge )
)
)
) BOARD OF PATENT
IAN A. CALVERT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
Appeal No. 97-3294
Application 08/408,225
15
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