Ex parte Prywes

Board of Patent Appeals and Interferences

Mar 5, 1998

07696859 (B.P.A.I. Mar. 5, 1998)

Application for patent filed May 8, 1991.1
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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journal and (2) is not binding precedent of the Board.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. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte ARNOLD S. PRYWES
________________
Appeal No. 95-0423
Application 07/696,8591
________________
ON BRIEF
________________
Before McCANDLISH, Senior Administrative Patent Judge, STAAB
and McQUADE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-32
and 34-63, all the claims in the application. We affirm-in-
part.
Appellant’s invention pertains to a shunt for use in the
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body of a patient for establishing communication between a
high pressure chamber and a low pressure chamber separated by
a membrane (claims 16-31 and 58), the combination of a hole
forming device for forming a hole in a membrane and a shunt
removably carried by the hole forming means (claims 1-15, 55-
57 and 61-63), and a method of providing communication in the
body of a patient across a membrane separating high and low
pressure chambers (claims 32, 34-54, 59 and 60). A basic
understanding of the invention can be derived from a reading
of exemplary claim 1, a copy of which is appended to
appellant’s brief.
The following reference of record is relied upon by the
examiner in support of rejections under 35 U.S.C. § 102(e) and
35 U.S.C. § 103:
Ritch et al. (Ritch) 4,968,296 Nov. 6,
1990
(filed Dec. 20, 1989)
The following rejections are before us for review:
(a) claim 59 stands rejected under 35 U.S.C. § 112,
second paragraph, “as being infinite” (answer, page 3);
(b) claims 1-32 and 34-63 stand rejected under 35 U.S.C.
§ 102(c) “as being abandoned by applicant” (answer, page 4);
Appeal No. 95-0423
Application 07/696,859
The examiner appears to have inadvertently included2
claim 26 in the statement of this rejection on page 5 of the
answer. In this regard, see the statement of the rejection of
claims under § 103 based on Ritch as set forth on page 5 of
the final rejection and on page 4 of the office action dated
May 20, 1993, wherein claim 26 is not listed. See also page 2
of the answer, last two lines, under the heading “Grouping of
claims” wherein claim 26 is not listed among the claims
rejected under
§ 103. Accordingly, we have not included claim 26 in our
restatement of this rejection.
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(c) claims 1, 16, 20, 28, 29, 32 and 43-48 stand rejected
under 35 U.S.C. § 102(e) as being anticipated by Ritch; and
(d) claims 17-19, 25, 27 and 31 stand rejected under
35 U.S.C. § 103 as being unpatentable over Ritch.2
The rejections are explained on pages 3-5 of the answer.
Appellant’s argument is set forth on pages 6-17 of the
brief. In addition, appellant relies on declarations
submitted May 8, 1991 (Prywes I) and October 12, 1993 (Prywes
II).
The 35 U.S.C. § 112, second paragraph, rejection
We shall not sustain the 35 U.S.C. § 112, second
paragraph, rejection of claim 59.
The basis of this rejection is the examiner’s belief that
claim 59 is vague and indefinite because the terminology “the
Appeal No. 95-0423
Application 07/696,859
The Prywes I declaration was submitted for the purpose3
of antedating the Ritch ‘296 patent presently applied by the
examiner against certain appealed claims. The Ritch ‘296
patent was initially made of record by appellant in an
Information Disclosure Statement (Paper No. 2) submitted at
the time the present application was filed.
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intermediary of said shunt” lacks antecedent basis. However,
we agree with appellant that “[t]he word ‘intermediary’ is not
used in a structural sense in the claim which would require
antecedent support, but as its normal meaning that the
therapeutic substance is delivered through the intervention or
presence of the shunt” (brief, page 16). Under these
circumstances, we are convinced that the artisan would have no
trouble understanding the metes and bounds of claim 59,
particularly when the claim is read in light of the supporting
disclosure.
The 35 U.S.C. § 102(c) rejection
We shall not sustain the 35 U.S.C. § 102(c) rejection of
claims 1-32 and 34-63.
This rejection is founded upon the showing of facts in
appellant’s 37 CFR § 1.131 declaration (Prywes I) submitted
concurrently with the filing of the present application. 3
According to the examiner,
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[t]he facts revealed in the [Prywes I] declaration
under 37 C.F.R. 1.131 show a delay of 3 years and 8
months (44 months) from the time of conception to
the time of filing of the application in this case.
It can be inferred that the application has been
abandoned by reason of unexplained delay. [answer,
page 4]
The examiner acknowledges that “intent is a consideration in
the holding of abandonment and that delay, alone and of
itself, is not sufficient for a holding of abandonment”
(answer, page 6). Nonetheless, the examiner has taken the
position that in this instance the delay is unexplained, and
that for this reason “the delay of 44 months in filing the
patent application suggest[s] more at an attempt to abandon
rather than an attempt not to abandon” (answer, page 6).
Appellant cites Ex parte Dunne, 20 USPQ2d 1479, 1480
(BPAI 1991) for the proposition that delay in filing alone is
not a sufficient basis from which to infer the requisite
intent to abandon under 35 U.S.C. § 102(c). In addition,
appellant relies on a declaration (Prywes II) wherein the
inventor asserts on page 1 thereof that “[i]n the interval of
time between September 12, 1987 and the filing of the
application, I intended to maintain my invention and at no
time had any intent whatsoever to abandon the same.”
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Appellant maintains that the examiner’s inference is misplaced
and that the examiner appears to misapprehend the correct
requirement for abandonment under 35 U.S.C. § 102(c).
The appellant’s position is well taken. As stated in Ex
parte Dunne, 20 USPQ2d at 1480 (BPAI 1991):
Actual abandonment under 35 U.S.C. § 102(c)
requires that the inventor intend to abandon the
invention . . . . Such intent to abandon an
invention will not be imputed, and every reasonable
doubt should be resolved in favor of the inventor. .
. . Delay in filing alone is not a sufficient basis
from which to infer the requisite intent to abandon
under 35 U.S.C.
§ 102(c).
In the present instance, it is clear that the examiner
has failed to make out a prima facie case of abandonment
within the meaning of 35 U.S.C. § 102(c), particularly when,
as set forth in Dunne, every reasonable doubt is to be
resolved in favor of the inventor.
The 35 U.S.C. § 102(e) and 35 U.S.C. § 103 rejections
based on Ritch ‘296
At the outset, we note appellant’s statement on page 10
of the brief that “when the rejection under 35 U.S.C. § 102(c)
is withdrawn, Ritch ‘296 no longer becomes a reference under
35 U.S.C. § 102(e).” Appellant has not explained why this is
Appeal No. 95-0423
Application 07/696,859
A review of the record reveals that at one point during4
prosecution, the examiner considered the Prywes I declaration
to be “ineffective to overcome the Ritch et al reference as it
pertains to claim 1” because appellant was claiming therein
the same invention as Ritch, but that said declaration “[was]
sufficient to overcome the Ritch et al reference as it
pertains to [the remaining] claims . . . .” Office Action
mailed September 30, 1992 (Paper No. 7), pages 2 and 3.
Subsequently, the examiner reversed his position with respect
to the appellant’s showing of facts, found the Prywes I
declaration to be insufficient to establish diligence, and
rejected a variety of claims under 35 U.S.C. § 102(e) and 35
U.S.C. § 103 based on the Ritch patent. See the Office Action
mailed May 20, 1993 (Paper No. 11).
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so, and no reason for so concluding is apparent to us.
We first take up for consideration the question of
whether the Ritch patent should be withdrawn as a reference in
light of appellant’s declaration under 37 CFR § 1.131 (Prywes
I). For completeness sake, we also consider the declaration4
submitted in response to the examiner’s rejection under 35
U.S.C. § 102(c) (Prywes II) to the extent it relates to this
question.
Prywes I states on page 1 that it is submitted “to
establish completion of the invention in this application in
the United States at a date prior to Dec. 20, 1989, which is
the effective date of US Patent 4,968,296 [to Ritch], which is
voluntarily cited by applicant in the attached information
Appeal No. 95-0423
Application 07/696,859
The examiner’s treatment of appellant’s showing of facts5
is incorrect to the extent it infers that appellant must show
diligence all the way from the date of conception to the
filing of the present application. As is made clear by 37 CFR
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disclosure statement.” Evidence in the form of reproductions
of notebook entries accompany Prywes I in support of the
statements made therein.
Prywes II, although not submitted for the purpose of
antedating the Ritch patent, is relevant here to the extent it
alleges in paragraphs 5 through 8 that appellant engaged in
certain activities in the interval of time between the alleged
date of conception and the filing of the application. No
evidence accompanies Prywes II in support of the statements
made therein.
The examiner determined that the Prywes I declaration was
sufficient to establish conception of the claimed invention
prior to the filing date of the Ritch patent (answer, page 4),
but that the declaration is not effective to overcome the
reference because “there is no factual evidence demonstrating
due diligence between the date of conception and the reduction
to practice that occurred by the filing of this application”
(answer, page 7). The examiner does not mention Prywes II in5
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Application 07/696,859
§ 1.131(b), where an applicant is the first to conceive an
invention but the second to reduce it to practice, diligence
must be shown from just prior to the effective date of the
reference to a subsequent reduction to practice or filing of
the application.
Actual reduction to practice requires at the very least6
a showing that the apparatus actually existed. In re
Asahi/American Inc., 68 F.3d 442, 445, 37 USPQ2d 1204, 1206
(Fed. Cir. 1995).
“A process is reduced to practice when it is7
successfully performed.” Corona v. Dovan, 273 U.S. 692, 1928
Comm’r Pats. 253, 262-63 (1928).
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addressing the question of diligence.
We agree with the examiner that Prywes I establishes
conception of the invention prior to the filing date of Ritch.
Nevertheless, like the examiner, we find the appellant’s
showing of facts to be insufficient to remove Ritch as a
reference. First, appellant’s showing does not establish that
the claimed combination, or shunt, ever actually existed , or6
that the claimed method was ever performed . Accordingly, no7
actual reduction to practice of the invention, either prior to
or after the filing date of Ritch, has been established.
Second, as to diligence during the critical period from just
prior to the effective date of the Ritch patent to the filing
of the application, the only relevant showing in this regard
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is found in paragraphs 5 through 8 of Prywes II, wherein
certain activities are alleged to have taken place in the
interval to time between conception of the invention and the
filing of the application. However, as previously noted, no
evidence has been provided in support of these allegations.
Accordingly, diligence has not been establish. It follows
that appellant’s showing of facts is insufficient to overcome
the Ritch patent. See 37 CFR
§ 1.131(b).
Turning now to the merits of the rejections based on
Ritch, we shall not sustain the rejection of claims 1, 20 and
32 as being anticipated by Ritch.
Claim 1 calls for “fluid control means carried by said
shunt means for controlling flow of fluid through the shunt
means from the high pressure chamber to the low pressure
chamber.” Claim 20 contains similar language. Method claim
32 calls for the step of “controlling the flow of fluid
through said shunt . . . to regulate rate of fluid flow
between said chambers.” In attempting to read this claim
language on Ritch, the examiner has taken the position that
the purpose of the Ritch et al. reference is to
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control fluid flow from the eye so as to permit the
treatment of glaucoma. The fluid flow is controlled
by the aperture in the shunt, thus this aperture
reads as the claimed “fluid flow control means.”
This flow control means is carried by the shunt
means. [answer, pages 7-8]
We cannot accept this position. In accordance with In re
Donaldson Co., Inc., 16 F.3d 1189, 29 USPQ2d 1845 (Fed. Cir.
1994), the means for controlling flow of claims 1 and 20, and
the step of controlling flow of claim 32, must be interpreted
in accordance with the sixth paragraph of 35 U.S.C. § 112,
i.e., “construed to cover the corresponding structure . . . or
acts described in the specification and equivalents thereof.”
Appellant’s specification makes clear that the means for and
act of controlling flow between the high and low pressure
chambers is separate and distinct from the means for and act
of merely placing these two chambers in communication via the
aperture in the shunt. See page 5, lines 6-15 of appellant’s
specification, wherein it is stated that according to a broad
aspect of the invention hollow shunt means is engaged with the
membrane to establish communication between the chambers, and
lines 16-24 wherein it is stated that according to a further
aspect of the invention the shunt means can carry means for
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controlling flow of fluid through the shunt means. The
specification then goes on to disclose structures, i.e.,
inflatable member 52 in the form of a porous balloon carried
by the shunt (see, for example, page 17, lines 2-5) and porous
plug 40 inserted into the aperture of the shunt (page 15, line
30 through page 16, line 8) for controlling the rate of flow.
In that we do not find any such hollow balloon member or plug
or equivalents thereof disclosed in or suggested by Ritch, we
conclude that the examiner has not made out a prima facie case
of anticipation of claims 1, 20 and 32 based on Ritch.
We shall sustain the rejection of claims 16, 28 and 29 as
being anticipated by Ritch, since appellant concedes on pages
10-11 that these claims would be properly subject to rejection
under 35 U.S.C. § 102(e) by Ritch if Ritch is available as a
reference.
We shall not sustain the rejection of claims 17-19, 25,
27 and 31 as being unpatentable over Ritch.
Each of these claims, in one form or another, calls for a
tapered portion on the shunt that increases in radial extent
from one end of the shunt to the other. In addition, claim 25
calls for the tapered portion to be angled relative to the
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remainder of the body. Although the examiner concedes that
Ritch does not disclose these features, he nevertheless
concludes that they would have been obvious to one of ordinary
skill in the art “as a choice of geometrical design” (answer,
page 5).
In short, Ritch does not provide the factual basis
necessary to support this conclusion of obviousness. The
tapered portions are stated to facilitate entry of the shunt
into the hole formed in the membrane (specification, page 15,
lines 8-10) and the angled construction is stated to allow the
shunt to conform to the curvature of the globe of the eye
(specification, page 11, lines 35-37). Accordingly, these
features of appellant’s invention may not be dismissed as
obvious design parameters without supporting evidence.
Compare In re Kuhle, 526 F.2d 553, 555, 188 USPQ 7, 9 (CCPA
1975). Thus, based on the prior art relied upon by the
examiner, we cannot sustain the rejection of claims 17-19, 25,
27 and 31 as being unpatentable over Ritch.
We shall sustain the rejection of claim 43 as being
anticipated by Ritch.
The only limitation of method claim 43 argued by
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appellant as distinguishing over Ritch is the step of “axially
displacing the shunt from the tool into the hole coaxially
with the latter.” According to appellant, “[t]he method of
Ritch ‘296 is entirely dissimilar as Ritch employs a cam
surface 27 to ensure that the
shunt will be laterally displaced as it is being ejected”
(brief, page 12).
Ritch states that the shunt is “discharged forwardly and
laterally” through the opening 22 into the membrane (column 6,
line 20). When the claim language “axially displacing the
shunt from the tool” is given its broadest reasonable
interpretation consistent with the specification (In re
Prater, 415 F.2d 1393, 1404, 162 USPQ 541, 550 (CCPA 1969)),
without reading limitations thereinto from the specification
(Sjolund v. Musland, 847 F.2d 1573, 1582, 6 USPQ2d 2020, 2027
(Fed. Cir. 1988)), the argued claim language does not preclude
the kind of compound discharging motion disclosed by Ritch,
which motion includes a forward or axial component. As to the
requirement that the shunt is displaced “into the hole
coaxially with the latter,” we consider the words “the latter”
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to be a reference to “the hole” in the membrane, such that the
claim language simply requires that the shunt be displaced
coaxially into the hole. In that the shunt 21 of Ritch can
likewise be said to move coaxially into the hole formed by the
cannula in the membrane 18, it is our view that this
requirement also does not serve to distinguish over Ritch.
Accordingly, as argued, we will sustain the § 102 rejection of
claim 43 based on Ritch.
Claims 44 and 46-48, which depend from claim 43, have not
been separately argued by appellant. We will therefore also
sustain the rejection of these claims as being anticipated by
Ritch. See In re Nielson, 816 F.2d 1567, 1572, 2 USPQ2d 1525,
1528 (Fed. Cir. 1987).
We shall not sustain the rejection of claim 45 as being
anticipated by Ritch.
Claim 45 depends from claim 43 and additionally requires
that the axially displacing step of the base claim “is
effected in a straight line.” Notwithstanding that the shunt
of Ritch may translate axially until it reaches the cam
surface 27, it cannot be fairly said that the displacing of
Ritch’s shunt is “effected in a straight line,” as called for
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in claim 45.
Summary
The rejection of claim 59 under 35 U.S.C. § 112, second
paragraph, is reversed.
The rejection of claims 1-32 and 34-63 under 35 U.S.C.
§ 102(c) is reversed.
The rejection of claims 1, 16, 20, 28, 29, 32 and 43-48
under 35 U.S.C. § 102(e) as being anticipated by Ritch ‘296 is
reversed as to claims 1, 20, 32 and 45, but is affirmed as to
claims 16, 28, 29, 43, 44 and 46-48.
The rejection of claims 17-19, 25, 27 and 31 under 35
U.S.C. § 103 as being unpatentable over Ritch ‘296 is
reversed.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
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Application 07/696,859
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HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
)
LAWRENCE J. STAAB ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 95-0423
Application 07/696,859
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Julian H. Cohen
Ladas & Parry
26 W. 61st St.
New York, NY 10023