Ex Parte Sirimanne et al

Patent Trial and Appeal Board

Mar 21, 2013

10961979 (P.T.A.B. Mar. 21, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/961,979 10/08/2004 INV001D. Laksen Sirimanne DEV-5247USCNT5 7770
21884 7590 03/22/2013
WELSH FLAXMAN & GITLER LLC
2000 DUKE STREET, SUITE 100
ALEXANDRIA, VA 22314
EXAMINER
CATTUNGAL, SANJAY
ART UNIT PAPER NUMBER
3768
MAIL DATE DELIVERY MODE
03/22/2013 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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte D. LAKSEN SIRIMANNE, DOUGLAS S. SUTTON,
NATALIE V. FAWZI, and GAIL LEBOVIC
____________________

Appeal 2011-001386
Application 10/961,979
Technology Center 3700
____________________

Before: WILLIAM V. SAINDON, SCOTT A. DANIELS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-001386
Application 10/961,979
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-3. We have jurisdiction under 35 U.S.C. § 6(b).

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. An intracorporeal site marker for marking a selected biopsy
site within tissue of a patient, comprising:
a) an elongated body of bioabsorbable gel, the elongated
body having a continuous outer wall surface shaped and
dimensioned to fill the biopsy site; and
b) a metallic band disposed at least partially surrounding
an outer surface of the body of gel which is recognizably
artificial when the marker is subject to ultrasound or X-ray
imaging, so as to be readily distinguishable from biological
features within the tissue site.

References
The Examiner relies upon the following prior art references:
Buirge
Wang
Chen
US 5,693,085
US 6,379,379 B1
US 7,093,599 B2
Dec. 2, 1997
Apr. 30, 2002
Aug. 22, 2006

Rejections
I. Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by Buirge.
Ans. 4.
II. Claims 2 and 3 are rejected under § 103(a) as unpatentable over
Buirge and Wang. Ans. 4.
III. Claims 1-3 are rejected under § 103(a) as unpatentable over Chen and
Wang. Ans. 5.
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SUMMARY OF DECISION
We AFFIRM.

OPINION
Rejection I - Buirge
The Examiner found that Buirge describes an elongated body of
bioabsorbable gel with a metallic band disposed around it. Ans. 4. The
Examiner found that the Buirge device is recognizably artificial when
subjected to x-ray. Id. The Examiner also found that the tube shape of
Buirge’s device satisfies the limitation requiring a structure having a
continuous outer wall. Ans. 6.
Appellants argue, throughout both briefs, that Buirge describes a stent
and the claims require a biopsy site marker. We agree with Appellants that
the preambles of claims must be given due weight, but we disagree that the
claims define over the Buirge stent. The claims state that the claimed device
is “for marking a selected biopsy site within tissue of a patient.” “It is well
settled that the recitation of a new intended use for an old product does not
make a claim to that old product patentable.” In re Schreiber, 128 F.3d
1473, 1477 (Fed. Cir. 1997). Once the Examiner establishes a reasonable
basis that the product is inherently capable of the claimed use, the burden
shifts to Appellants to show that the prior art structure does not inherently
possess the functionally claimed limitations of the claimed product. Id. at
1478. Here, the Examiner has passed the burden to Appellants because the
Examiner has shown that Buirge satisfies each of the structural elements of
the claim. Clearly, Buirge’s stent is of a size, shape, and composition to be
implanted in a cavity in the body. Appellants have not established that an
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intended use as a biopsy site marker implies any additional structure aside
from that explicitly claimed. Cf. Rowe v. Dror, 112 F.3d 473, 479-80 (Fed.
Cir. 1997) (distinguishing the claimed balloon angioplasty catheter from a
general balloon catheter by analyzing the structural requirements imparted
by the term “angioplasty”). Merely pointing out that Buirge does not
explicitly recognize his invention as a biopsy site marker is not dispositive.
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772 (1984) (It is not
necessary that the reference teach what the subject application teaches, but
only that the claim read on something disclosed in the reference, i.e., that all
of the limitations in the claim be found in or fully met by the reference);
Schreiber, 128 F.3d at 1477 (“the absence of a disclosure relating to function
does not defeat the Board’s finding of anticipation”). Accordingly, we are
not apprised of error in the Examiner’s finding that Buirge’s stent is capable
of marking a selected biopsy site within tissue of a patient.
Appellants next argue that Buirge does not disclose a continuous outer
wall as claimed. App. Br. 11-12. However, as the Examiner points out
(Ans. 6), a tube shape has a continuous outer wall. Appellants appear to
believe that a continuous outer wall precludes open ends but provide no
reasoning in support of such a narrow construction. Nothing in the claims
or Specification precludes the continuous tubular outer wall of Buirge from
being a “continuous outer wall.” Indeed, the Specification shows a ring-
shaped embodiment having open ends. See fig. 2C.
Reviewing both of Appellants’ briefs, we are not apprised of error in
the Examiner’s finding that Buirge anticipates the subject matter of claim 1.
Rejection II – Buirge and Wange
Claims 2 and 3 are similar in scope to claim 1, except they require that
the gel is a polylactic acid and/or the metal is titanium. The Examiner found
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that Buirge does not describe these materials1 but that Wang does. Ans. 4-5.
The Examiner concluded that it would have been obvious to use titanium as
the metal because the material is well known in the art and is highly visible
under x-ray and ultrasound. Ans. 5. The Examiner concluded it would have
been obvious to use polylactide as an obvious variant of the collagen gel of
Buirge. Id.
Appellants argue throughout both briefs, again, that Buirge (now
modified with the teachings of Wang) does not disclose a biopsy site marker.
These arguments are unpersuasive for the reasons set forth above.
Appellants argue that Buirge describes a tube with a band thereabout,
not a band within a tube. App. Br. 15. However, Buirge clearly teaches
both variations. See, e.g., fig. 12.
Appellants argue that the Examiner has not provided a rationale in
support of the combination. App. Br. 15-16. However, the Examiner does
provide a rationale: that the gel of Wang is an obvious variant. Ans. 5. That
is, it is a simple substitution of one known element for another. KSR Int'l
Co. v. Teleflex Inc., 550 U.S. 398 (2007) (“when a patent claims a structure
already known in the prior art that is altered by the mere substitution of one
element for another known in the field, the combination must do more than
yield a predictable result”). The story is similar for the metal, which, as we
found above, is already in Buirge. See n. 1. Appellants have not apprised us
of error in the Examiner’s articulated reasoning.

1 The Examiner is incorrect because Buirge describes the stent comprising a
titanium marker. See Buirge, col. 3, l. 41 (“Stent 10 is … nitinol”). This
finding is harmless as to the ultimate conclusion of obviousness because the
Examiner found that Wang discloses nitinol (a nickel and titanium alloy).
Ans. 5.
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Reviewing both briefs, we are not apprised of error in the Examiner’s
rejection of claims 2 and 3 as unpatentable over Buirge and Wang.
Rejection III – Chen and Wang
The Examiner found that Chen describes the claim limitations except
for the particular gel and metal, which Wang describes. Ans. 5. Appellants
argue that, based on the medical uses listed in Chen, Chen’s structure is only
considered for external uses. App. Br. 20; see also App. Br. 19 (listing
various uses of the Chen material). Accordingly, Appellants argue, there is
no reason to modify that structure to include the bioabsorbable gel of Wang.
Id. This argument is persuasive.
In contrast to the situation in Rejection II, the proposed modification
to the gel in Chen is not merely the predictable substitution of one known
element for another. In Rejection II, the substitution was among highly
similar devices (both being stents using gels). In Rejection III, however, the
Examiner is proposing to modify the gel material used for an external
cushioning/vibration dampening device for a gel in a stent. We consider the
substitution rationale to be an insufficient explanation in this situation due to
the stark differences between the structure and uses of the devices in Chen
and Wang, as Appellants point out. Similarly, that nitinol is a known
material does not explain how it is obvious to use it in the structure depicted
in Chen’s figure 2. As with the gel, the reason this explanation is
insufficient is because of the extreme differences between the structures and
uses of Chen and Wang’s devices. Accordingly, for Rejection III, unlike
in Rejection II, it is not apparent to us that the modification is a simple
substitution. In this situation, a more comprehensive explanation as to why
the proposed modification would have been obvious is required.
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In light of the above, we do not sustain the Examiner’s rejection of
claims 1-3 as obvious over Chen and Wang.

DECISION
We AFFIRM the Examiner’s decision regarding claim 1 as
anticipated by Buirge.
We AFFIRM the Examiner’s decision regarding claims 2 and 3 as
unpatentable over Buirge and Wang.
We REVERSE the Examiner’s decision regarding claims 1-3 as
unpatentable over Chen and Wang.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED

JRG