Ex parte PALERMO et al.

Board of Patent Appeals and Interferences

Mar 11, 1998

08214858 (B.P.A.I. Mar. 11, 1998)

Application for patent filed March 18, 1994. According1
to appellants, the application is a continuation of Applica-
tion 07/975,376, filed November 13, 1992, now U.S. Patent
5,350,397, issued September 27, 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(2) is not binding precedent of the Board.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. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte THOMAS J. PALERMO
and
PHONG PHAM
_____________
Appeal No. 96-2562
Application 08/214,8581
______________
ON BRIEF
_______________
Appeal No. 96-2562
Application 08/214,858
2
Before CALVERT, FRANKFORT and CRAWFORD, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's
final rejection of claims 1, 3 through 5 and 14 through 16,
which are all of the claims remaining in this application.
Claims 2 and 6 through 13 have been canceled.
Appellants' invention relates to a detachable em-
bolic coil for use in a surgical instrument that allows such
coil to be delivered to a selected site within the vasculature
of the human body via use of a catheter. As explained on page
1 of appellants' specification, the invention more particu-
larly involves
an embolic coil having a radially enlarged
member attached to one end, which coil is
released by forcing the radially enlarged
member axially through a distendible aper-
ture situated on the distal end of a pusher
assembly.
Appeal No. 96-2562
Application 08/214,858
3
Claim 1 is representative of the subject before us
on appeal, and reads as follows:
1. A detachable embolic coil comprising a coil with
a diameter and further having a proximal and a distal end and
having a radially enlarged ball member larger than said coil
diameter fixedly attached to one of said ends.
The sole prior art reference of record relied upon
by the examiner as evidence of obviousness of the claimed
invention under 35 U.S.C. § 103 is:
Marks 5,217,484 June 8, 1993
In addition to the foregoing prior art, the examiner
has also relied upon appellants' prior U.S. Patent No.
5,350,397, issued September 27, 1994, in a double patenting
rejection.
Claims 1, 3 through 5 and 14 through 16 stand re-
jected under 35 U.S.C. § 103 as being unpatentable over Marks.
Claim 1, 3 through 5 and 14 through 16 stand addi-
tionally rejected under the judicially created doctrine of
Appeal No. 96-2562
Application 08/214,858
4
double patenting over appellants' prior U.S. Patent No.
5,350,397.
Rather than reiterate the examiner's full explana-
tion of the basis for the above-noted rejections and the
conflicting viewpoints advanced by the examiner and appellants
regarding the rejection, we make reference to the final
rejection (Paper No. 10, mailed May 15, 1995) and examiner's
answer (Paper No. 15, mailed February 20, 1996) for the exam-
iner's reasoning in support of the rejections, and to appel-
lants' brief (Paper No. 14, filed January 22, 1996) for appel-
lants' arguments thereagainst.
OPINION
At the outset, we note that appellants' brief, at
page 3, indicates that the claims on appeal "may be grouped
together," which statement we take as meaning that the claims
on appeal stand or fall together.
Appeal No. 96-2562
Application 08/214,858
5
In reaching our decision in this appeal, we have
given careful consideration to appellants' specification and
claims, to the applied prior art Marks reference, and to the
respective positions articulated by appellants and the exam-
iner. Upon evaluation of all of the evidence before us, we
have reached the conclusions which follow.
Looking first to the examiner's rejection of the
appealed claims under "the judicially created doctrine of
double patenting," we note appellants' comment on page 6 of
the brief that they have "offered to file a terminal dis-
claimer under 37 C.F.R. 1.321." However, no such termi-
nal disclaimer has been filed and appellants have not other-
wise presented any argument
against the examiner's rejection. As a result, we are com-
pelled to summarily affirm the examiner's rejection based on
double patenting.
Appeal No. 96-2562
Application 08/214,858
6
As for the rejection of claims 1, 3 through 5 and
14 through 16 under 35 U.S.C. § 103, we find appellants'
arguments on pages 4-6 of the brief to be persuasive of error
on the examiner's part. Like appellants, we are of the opin-
ion that the examiner's analysis regarding this rejection
constitutes improper hindsight reasoning based upon appel-
lants' own teachings and not upon any reasonable teaching or
suggestion found in the applied prior art reference to Marks.
The examiner's contention (answer, page 4) that to change the
ball size in Marks to be of a diameter which is radially
larger than the diameter of the coil therein would have been
"simply an obvious design modification known to one skilled in
the art," has no evidential basis in the record before us and
is based purely on speculation.
In accordance with the foregoing, we have sustained
the examiner's rejection of claims 1, 3 through 5 and 14
through 16 under the judicially created doctrine of double
patenting, but reversed the examiner's rejection of these same
appealed claims
Appeal No. 96-2562
Application 08/214,858
7
under 35 U.S.C. § 103 based on Marks. Since at least one
rejection of all of the claims on appeal has been sustained,
the decision of the examiner is affirmed.
No time period for taking any subsequent action in
con- nection with this appeal may be extended under 37 CFR §
1.136(a).
AFFIRMED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Appeal No. 96-2562
Application 08/214,858
8
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