Ex Parte Srinivasan et al

Patent Trial and Appeal Board

Jul 22, 2016

12719181 (P.T.A.B. Jul. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
121719,181 03/08/2010 Satchit SRINIVASAN
22850 7590 07/26/2016
OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP,
1940 DUKE STREET
ALEXANDRIA, VA 22314
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
396071US99X CIP 6617
EXAMINER
TRUONG,DUC
ART UNIT PAPER NUMBER
1765
NOTIFICATION DATE DELIVERY MODE
07/26/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
patentdocket@oblon.com
oblonpat@oblon.com
ahudgens@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SATCHIT SRINIVASAN, NIKICA MALJKOVIC, ROMANA B.
CHAVERS, MOHAMMAD JAMAL EL-HIBRI, ROY L. CARTER,
DAVID B. THOMAS, LESLIE J. MYRICK, and TODD S. RUSHING
Appeal2016-004544
Application 12/719, 181
Technology Center 1700
Before ADRIENE LEPIANE HANLON, MARK NAGUMO, and
JEFFREY R. SNAY, Administrative Patent Judges.
SNAY, Administrative Patent Judge.
DECISION ON APPEAL 1
Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 1-16. A hearing was held on July 6, 2016, a
transcript of which has been entered into the electronic record. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
1 We cite to the Specification ("Spec.") filed Mar. 8, 2010; Final Office
Action ("Final Act.") mailed Sep. 14, 2012; Examiner's Answer ("Ans.");
and Appellants' Appeal Brief ("App. Br.") and Reply Brief ("Reply Br.").
2 Appellants identify Solvay Advanced Polymers, L.L.C. as the real party in
interest. App. Br. 2.
Appeal2016-004544
Application 12/719, 181
BACKGROUND
The subject matter involved in this appeal relates to a prosthetic
device, at least part of which consists of a polymer composition comprising
a specified polymer blend. Spec. 1. The phrase "prosthetic device" as it is
used in the specification, including the claims, denotes "an artificial device
which is made to replace and act as a missing biological structure." Spec. 6.
Sole independent claim 1 illustrates the subject matter on appeal and is
reproduced from the Claims Appendix of the Appeal Brief as follows:
1. A prosthetic device comprising at least one part
consisting of a polymer composition comprising at least one
polyarylene (P 1) and at least one polyarylether selected from
the group consisting ofpoly(aryl ether ketone)s (P2) and
poly(aryl ether sulfone )s (P3).
REJECTION
The Examiner maintained the following ground of rejection on
appeal:
I. Claims 1-16 stand rejected under 35 U.S.C. § 102(b) as unpatentable
over Maljkovic. 3
DISCUSSION
To be anticipatory, a reference must describe, either expressly or
inherently, each and every claim limitation, arranged or combined as
claimed. See, e.g., In re Gleave, 560 F.3d 1331, 1334 (Fed. Cir. 2009).
After review of the respective positions provided by Appellants and the
3 WO 2007/101857 A2, published Sep. 13, 2007 ("Maljkovic").
2
Appeal2016-004544
Application 12/719, 181
Examiner, we conclude that the preponderance of the evidence supports
Appellants' position that the Examiner's anticipation finding cannot be
sustained for substantially the reasons set forth by Appellants in the Briefs.
Claim 1 recites a prosthetic device. Appellants argue that Maljkovic
does not describe a prosthetic device. App. Br. 6; Reply Br. 3. The
Examiner acknowledged that fact, 4 but found nonetheless that Maljkovic
anticipates Appellants' claims because the prosthetic device recitation is
"inherent" in Maljkovic' s disclosure of the recited polymer blend, Final Act.
2-3, or satisfied by Maljkovic' s disclosure of "membranes and other shaped
articles" which the Examiner opined to be "suitable for use" in a prosthetic
device, Ans. 3.
The Examiner's inherency rationale-that the prosthetic device
element of the claims inherently is met by Maljkovic' s disclosure of the
polymer blend---cannot stand because it ignores Appellants' explicit
recitation of a "prosthetic device.'' Plainly, not every article fabricated from
the recited polymer material is a prosthetic device. Neither can we sustain
the Examiner's alternative rationale that the various articles described in
Maljkovic purportedly are suitable for use in a prosthetic device. The
Examiner did not identify substantial evidence sufficient to support a finding
that any of the articles described in Maljkovic is a prosthetic device or forms
a part of a prosthetic device. The Examiner's alternative reasoning that
Maljkovic' s described articles are "suitable for use" in a prosthetic device is
conclusory and, in any event, not sufficient to support a finding of
4 Final Act. 2 ("Applicant is correct in stating that none of the references
disclose[s] ... a prosthetic device.").
3
Appeal2016-004544
Application 12/719, 181
anticipation. Whether one skilled in the art would have found it obvious to
incorporate any of Maljkovic' s fabricated articles into a prosthetic device, or
to use the materials disclosed by Maljkovic in a prosthetic device, based on a
purported suitability for that use are issues of obviousness that have not been
placed before us in this appeal.
Because Maljkovic admittedly fails to describe a prosthetic device, we
will not sustain the Examiner's finding that Maljkovic anticipates
Appellants' claim 1.
DECISION
The Examiner's decision rejecting claims 1-16 is reversed.
REVERSED
4