Ex Parte Fleischhacker

Patent Trial and Appeal Board

Oct 25, 2012

12367375 (P.T.A.B. Oct. 25, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MARK G. FLEISCHHACKER
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Appeal 2011-008024
Application 12/367,375
Technology Center 3700
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Before DONALD E. ADAMS, LORA M. GREEN, and
FRANCISCO C. PRATS, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant requests reconsideration (rehearing) of the Board's opinon
entered July 26, 2012 (Opinion) affirming the anticipation rejection of
record (Req. Reh‟g 1).
1
We have jurisdiction under 35 U.S.C. § 6(b).
Appellant presents the following issues for our review on rehearing:
Issue 1: Mam
2
fails to teach a non-metallic guidewire for magnetic
resonance (MR) imaging, Mam fails to enable a non-metallic guidewire, and

1
Appellant does not contest the Board‟s decision to affirm the obviousness
rejections of record (Req. Reh‟g 1).
2
Mam et al., US 6,602,207 B1, issued Aug. 5, 2003.
Appeal 2011-008024
Application 12/367,375

2
evidentiary documents cannot be relied upon in an anticipation rejection
(Req. Reh‟g 2-5).
Issue 2: The Board relied upon new factual findings (id. at 5).
Issue 3: Appellant‟s proposed factual findings (id. at 5-6).
We take each in turn.
Issue 1:
Appellant recognizes that Mam teaches that both the core and coil
wires may be formed of any biocompatible plastic or metal (Req. Reh‟g 3;
see also Opinion 3; FF 2). “Appellant provides no persuasive evidence or
argument to suggest that a guidewire prepared from biocompatible plastic as
taught by Mam would not be useful in MR diagnostic or therapeutic
procedures” (Opinion 4).
Notwithstanding Appellant‟s contention to the contrary, from the
foregoing, it is clear that Mam provides an enabling disclosure of a non-
metallic guidewire.
Lastly, we remain in agreement with Examiner‟s reasoning that Mam
“„does not need to go into detail about what types of biocompatible plastics
are available for use in a guidewire” as “[t]hose skilled in the art know the
types of plastics commonly used in catheters and guidewires‟” (Opinion 3;
Cf. Req. Reh‟g 3). See In re Samour, 571 F.2d 559, 562-563 (CCPA 1978).

Issue 2:
Appellant contends that “[n]ew FF [(Factual Findings)] by an
appellant tribunal would appear to be unique to PTAB jurisprudence” and
“objects to each and every FF in the opinion as improperly usurping the
Examiner‟s role in prosecution” (Req. Reh‟g 5). We are not persuaded.
Appeal 2011-008024
Application 12/367,375

3
Notwithstanding Appellant‟s contention to the contrary, the Factual
Findings recited in the opinion are not “new,” but are instead simply a
consolidated, numbered, recitation of Examiner‟s Factual Findings. To be
very specific, the citations to the prior art, as set forth in the Factual
Findings, refer to prior art citations expressly relied upon by Examiner.

Issue 3:
We recognize, but are not persuaded by, Appellant‟s “Proposed
Factual Findings,” for the reasons set forth in the Opinion (see Req. Reh‟g 5
(emphasis removed)).

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

REHEARING DENIED

cdc