10839112 (B.P.A.I. May. 2, 2012)

Ex Parte Fulton et al

Board of Patent Appeals and InterferencesMay 2, 2012

10839112 (B.P.A.I. May. 2, 2012)

MOD PTOL-90A (Rev.06/08) APPLICATION NO./ CONTROL NO. FILING DATE FIRST NAMED INVENTOR / PATENT IN REEXAMINATION ATTORNEY DOCKET NO. 10/839,112 05/04/2004 Richard E. Fulton DEV-5431USCNT8 EXAMINER WELSH FLAXMAN & GITLER LLC 2000 DUKE STREET, SUITE 100 ALEXANDRIA, VA 22314 SZMAL, BRIAN SCOTT ART UNIT PAPER NUMBER 3736 MAIL DATE DELIVERY MODE 05/02/2012 PAPER 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. UNITED STATES DEPARTMENT OF COMMERCE U.S. Patent and Trademark Office Address : COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov UNITED STATES PATENT AND TRADEMARK OFFICE _____________________________________________________________________________________ UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES __________ Ex parte RICHARD E. FULTON and WILLIAM RICHARD DUBRUL __________ Appeal 2011-001486 Application 10/839,112 Technology Center 3700 __________ Before DEMETRA J. MILLS, LORA M. GREEN, and RICHARD M. LEBOVITZ, Administrative Patent Judges. MILLS, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134. The Examiner has rejected the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b). Appeal 2011-001486 Application 10/839,112 2 STATEMENT OF CASE 7. A method for marking a biopsy cavity comprising the steps of: providing a substantially dehydrated bioresorbable body having a radiopaque marker carried by the bioresorbable body, said bioresorbable body comprising cellulose; removing a biopsy specimen from the breast of a patient, thereby creating a biopsy site; inserting the bioresorbable body into the biopsy site to mark the location of the biopsy site, wherein the bioresorbable body after insertion contacts body fluid and swells to substantially fill the biopsy site. Cited References Haerr US 4,034,759 July 12, 1977 Stinson US 6,174,330 B1 Jan. 16, 2001 Foerster et al. US 6,228,055 B1 May 8, 2001 Grounds of Rejection Claims 7-12, 15 and 16 are rejected under 35 U.S.C. § 103(a) over Foerster in view of Stinson and Haerr. FINDINGS OF FACT The Examiner’s findings of fact and conclusions are set forth in the Answer at pages 3-12. Discussion ISSUE The Examiner concludes that Foerster teaches each element claimed, including a biodegradable material, but fails to teach the use of cellulose for the biodegradable material. (Ans. 3-4.) The Examiner relies on Stinson for Appeal 2011-001486 Application 10/839,112 3 the teaching of a cellulose biodegradable radiopaque marker and Haerr for the use of dehydrated cellulose which expands to fill the body cavity. (Id. at 4-5.) Appellants argue that Foerster teaches an expandable coil for marking a biopsy site. (App. Br. 8.) Appellants argue that it would have been highly unlikely for one of ordinary skill in the art to look to Stinson’s cellulose as an appropriate replacement for the metal coil material disclosed by Foerster. (Id. at 9.) Appellants argue that the cellulose of Stinson does not function in the same manner as the coil spring marker of Foerster, and that merely because a material is known does not make it obvious to substitute for another when it is not disclosed to perform the same function as the material it is replacing. (Id. at 10.) Appellants argue that the Examiner has not articulated a specific rationale for modifying the cited references, particularly in view of Haerr. (Id. at 11.) The issue is: Has the Examiner set forth a sufficient reason to combine the cited references to arrive at the claimed invention? PRINCIPLES OF LAW “In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of presenting a prima facie case of obviousness. Only if that burden is met, does the burden of coming forward with evidence or argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). In order to determine whether a prima facie case of obviousness has been established, we consider the factors set forth in Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at Appeal 2011-001486 Application 10/839,112 4 issue; (3) the level of ordinary skill in the relevant art; and (4) objective evidence of nonobviousness, if present. Under § 103, “there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (citation omitted). Obviousness is determined on the basis of the evidence as a whole and the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). ANALYSIS Appellants argue that Foerster teaches an expandable coil for marking a biopsy site. Appellants argue that it would have been highly unlikely for one of ordinary skill in the art to look to Stinson’s cellulose as an appropriate replacement for the metal material disclosed by Foerster. (App. Br. 9.) We are not particularly convinced by this argument, as Foerster discloses that the marker may be biodegradable (bioabsorbable) and may also be a plastic material. (Col. 13, ll. 30-37.) However, Appellants also argue that the cellulose of Stinson does not function in the same manner as the coil spring marker of Foerster, and that merely because a material is known does not make it obvious to substitute for another when it is not disclosed to perform the same function as the material it is replacing. (App. Br. 10.) In this respect, the device of Foerster is to define the margins of a lesion at all times during extraction of the lesion. (Col. 1, ll. 45-50.) It is preferred that the marker of Foerster take a helical shape (Col. 4, l. 65- col. 5, l. 1) to surround the lesion or take the Appeal 2011-001486 Application 10/839,112 5 form of a bead or pellets which may be deployed around the lesion. (Col. 13, ll. 16-26.) While the device of Stinson is also a biodegradable marker, it is used to visualize the passage and placement of an endoprosthesis in a damaged artery or body lumen. (Col. 1, ll. 19-22.) It is not deployed around a lesion for biopsy, as is Foerster’s device. While Haerr describes a dehydrated wick of cellular material that may be of cellulose for placement in the ear canal, we agree with Appellants that the Examiner has not articulated a specific rationale for modifying the devices of Foerster and Stinson with the device of Haerr. Haerr provides no reason to fill the biopsy site of Foerster, which Foerster would surround with marker, not fill with marker. (App. Br. 11.) The Examiner has not set forth a sufficient reason to combine the cited references to arrive at the claimed invention, and the obviousness rejection is reversed. Upon consideration of this appeal, we have reviewed our decisions in Appeal Nos. 2009-2192 and 2009-2073. We have determined that the instant claims are not the same as those in the prior appeals, and that Appellants provide several different arguments in this appeal than those presented in the prior appeals, which distinguish the present case from those appeals. CONCLUSION OF LAW The cited references do not support the Examiner’s obviousness rejections. REVERSED cdc