10932414 (B.P.A.I. Sep. 16, 2010)

Ex Parte Cook et al

Board of Patent Appeals and InterferencesSep 16, 2010

10932414 (B.P.A.I. Sep. 16, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________________ Ex parte TIMOTHY C. COOK and JOHN H. BURTON ____________________ Appeal 2009-011034 Application 10/932,414 Technology Center 3700 ____________________ Before: WILLIAM F. PATE III, MICHAEL W. O’NEILL, and FRED A. SILVERBERG, Administrative Patent Judges. PATE III, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-011034 Application 10/932,414 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 22-24 and 26-35. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. The claims are directed to an adjustable implantable genitourinary device. Claim 22, reproduced below, is illustrative of the claimed subject matter: 22. An implantable device adapted for use in body tissue adjacent a body lumen, the implantable device comprising: an adjustable element adapted to coapt the lumen, the adjustable element including a continuous wall having an inner surface defining a chamber, wherein at least a portion of the continuous wall includes a porous structure allowing fluid to move across the continuous wall; a hydrophilic material substantially encapsulated in the chamber; a tubular elongate body having a proximal end and a distal end, the tubular elongate body including a first interior passageway extending longitudinally in the tubular elongate body from a first port at the proximal end to a second port in fluid communication with the chamber; and a rear port element coupled to the proximal end of the tubular elongate body, the rear port element including a cavity in fluid communication with the first port of the first interior passageway and an elastic septum allowing access to the cavity by a needle, wherein the implantable device is adapted for implantation within the body tissue with the adjustable element adjacent the body lumen. Appeal 2009-011034 Application 10/932,414 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Allen Onishi US 3,138,161 US 5,547,472 Jun. 23, 1964 Aug. 20, 1996 REJECTION Claims 22-24, and 26-35 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Onishi and Allen. Ans. 4. OPINION The law with respect to preambles is well settled. Preamble language that merely states the purpose or intended use of an invention is generally not treated as limiting the scope of the claim. See Boehringer Ingelheim Vetmedica, Inc. v. Schering-Plough Corp., 320 F.3d 1339, 1345 (Fed. Cir. 2003); Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). However, the preamble is regarded as limiting if it recites essential structure that is important to the invention or necessary to give meaning to the claim. NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1305-06, (Fed. Cir. 2005); SanDisk Corp. v. Memorex Prods., Inc., 415 F.3d 1278, 1284 n.2, (Fed. Cir. 2005) (citation omitted). For example, in Rowe v. Dror, a catheter claimed in the preamble as a “balloon angioplasty catheter” was held by our reviewing court to be patentable over a catheter of general utility even though this description of the claimed subject matter appeared only in the preamble to the claim. 112 F.3d at 479. Therein, the court stated: [The] claim preamble has the import that the claim as a whole suggests for it. Where a patentee uses the claim preamble to Appeal 2009-011034 Application 10/932,414 4 recite structural limitations of his claimed invention, the PTO and courts give effect to that usage. Conversely, where a patentee defines a structurally complete invention in the claim body and uses the preamble only to state a purpose or intended use for the invention, the preamble is not a claim limitation. 112 F.3d at 478 (citations omitted). In essence, the court examined the entire specification and the arguments and found that the recitation in the preamble was, in fact, a structural limitation of Rowe’s claimed subject matter. In the present case, our review of the record as a whole, including Appellants’ disclosure and arguments on appeal, reveals that the recitation of “an implantable device adapted for use in body tissue adjacent a body lumen” is directed to the kind or type of device Appellants are claiming and should be regarded as a structural limitation. We do not regard this as a mere intended use as the Examiner has suggested. See Ans. 5. When Appellants indicate by argument and amendment that the claim is to be bound by the preambular structural limitations, then these limitations should be given full weight in the examination process. That is, if the claim drafter “chooses to use both the preamble and the body to define the subject matter of the claimed invention, the invention so defined, and not some other, is the one the patent protects.” Bell Commc’ns Research, Inc. v. Vitalink Commc’ns Corp., 55 F.3d 615, 620 (Fed. Cir. 1995). Moreover, in the instant case the body of the claims makes repeated and specific reference to the preambular recitation. The first clause of the claim recites “an adjustable element adapted to coapt the lumen”, and the ultimate clause of the claim recites that “the device is adapted for implantation within the body tissue with the adjustable element adjacent the body lumen.” When the body of the claim refers to a preambular limitation Appeal 2009-011034 Application 10/932,414 5 in this manner, it is a vital clue as to how the claim is to be construed. In fact, these phrases have been said to give “life, meaning and vitality” to a claim. See Kropa v. Robie, 187 F.2d 150, 152 (CCPA 1951). In the instant case, the applied reference to Onishi is not directed to an implantable device adapted for use in body tissue adjacent a body lumen as admitted by both the Appellants and the Examiner. App. Br. 8-9; Ans. 6. Therefore, the reference does not anticipate or render obvious the subject matter of Appellants’ claims. Furthermore, we disagree with the Examiner’s contention that the blood vessel the catheter is advanced in can be construed as the claimed lumen. Ans. 4. In this instance, the claim term “adjacent” is properly construed as “beside” or “near.” It cannot be construed, as the Examiner has done, to mean “inside.” DECISION The rejection of claims 22-24 and 26-35 is reversed. REVERSED nlk SCHWEGMAN, LUNDBERG & WOESSNER, P.A. P.O. BOX 2938 MINNEAPOLIS MN 55402