Ex Parte Ye et al

Board of Patent Appeals and Interferences

Jun 12, 2009

09839065 (B.P.A.I. Jun. 12, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte TING TINA YE, RHODA M. SANTOS,
ELAINE LIM, MAI XUAN TRAN,
HANH DOAN, and SIMON NGOC HUU NGUYEN
__________

Appeal 2008-005974
Application 09/839,065
Technology Center 3700
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Decided: June 12, 2009
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Before TONI R. SCHEINER, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellants have requested rehearing of the decision entered April 1,
2009. That Decision affirmed the Examiner’s rejections of claims 1 and 41
under 35 U.S.C. § 102(e) over Samson, of claims 1, 3-6, 8-11, 13-15, 17,
and 18 under 35 U.S.C. § 103(a) over Samson and of claims 1, 3-34, and 41
under 35 U.S.C. § 103(a) over Samson and Nita. We have jurisdiction under
35 U.S.C. § 6(b).
Appeal 2008-005974
Application 09/839,065

Issue
Did our use of the doctrine of inherency in the analysis of the
rejections under 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a) result in new
grounds of rejection?
Findings of Fact
1. In the Final Rejection (2/25/03), the Examiner stated that “[a]s
to the distal tip not being shapeable, the examiner interprets this, as meaning
the distal tip of the catheter would be able to form a shape or have enough
flexibility to maneuver the tip of the catheter through out the body. This is
taught by Sampson ('099) in the entire reference because the catheter is
designed to be used in the body to move through curved vessels (Column 5,
lines 20-35), and therefore would have to be shapeable (Final Rej. 2/25/03
6, emphasis added).
2. In the Final Rejection (1/28/04), the Examiner states that “the
examiner holds the limitation ‘shapeable by thermoforming techniques’ to
be a product by process limitation” (Final Rej. 1/28/04 5).
3. In the Final Rejection (1/28/04), the Examiner also states that
“[t]he examiner still believes that the catheter of Sampson will perform the
same function of the applicant's claimed invention (wherein Sampson's
catheter will be able to be shaped) and thus still read on the applicant's
invention” (Final Rej. 1/28/04 6).
4. In the Advisory Action (11/4/04), the Examiner finds that
The examiner understands the definition of shape and
understands the structure that is being claimed, according to
MPEP section 2112.01, 2114, if the claimed invention and
the prior art have the same structure then they would
perform the same function. The examiner applies Samson,
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Application 09/839,065

since Samson has the same structural limitations and works
in the same fashion. Samson has the ability to be flexible
and maneuver through the circulatory system; it would be
able to be shaped, since it would have to obtain different
shapes when moving through the body. (See paper dated
02/25/03). According to the remarks made in paper dated
11/12/03 the applicant argues that the “tip can be shaped”
and therefore the examiner interprets this as a functional
language limitation, not an actually structure. According to
MPEP section 2112.01, 2114, the examiner interprets that
the prior art invention only needs to be capable of being
shaped to anticipate the claim. This limitation is taught in
Samson.

(Advisory Action (11/4/04).
5. In the Examiner’s Answer, the Examiner responds to
Appellants’ citation of MPEP 2173.05(p)(I), finding that “[t]his section of
the MPEP does not given any insight into how to interpret claims that have
process limitations in an apparatus claim. Sections 2112.01, 2112.02, and
2113 of the MPEP are the areas that cover the interpretation of these claims”
(Ans. 3-4).
6. In the Examiner’s Answer, the Examiner finds that “[t]he
functional statement is ‘shapeable’, which the examiner used MPEP section
2112, and 2114 to find the scope of the claim” (Ans. 5).
7. MPEP § 2112 is titled “Requirements of Rejection Based on
Inherency; Burden of Proof” and begins “[t]he express, implicit, and
inherent disclosures of a prior art reference may be relied upon in the
rejection of claims under 35 U.S.C. 102 or 103” (MPEP § 2112; emphasis
added).
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Application 09/839,065

8. In the Examiner’s Answer, the Examiner stated that the
“examiner would also like to note that according to MPEP section 2112.01,
‘Where the claimed and prior art products are identical or substantially
identical in structure or composition, or are produced by identical or
substantially identical processes, a prima facie case of either anticipation or
obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433 (CCPA 1977)’ and therefore, a prima facie position has
been established” (Ans. 5).
9. In the Reply Brief, Appellants state that “[t]he Examiner cites
sections 2112.01 (Composition, Product and Apparatus Claims) as well as
2112.02 (Process Claims), both of which fall within MPEP 2112, which is
the MPEP section for Inherency Rejections” (Reply Br. 5).
10. In the Reply Brief, Appellants also state regarding the citation
of MPEP 2112 that “[e]ach of these sections were cited for the first time in
the present prosecution in the Advisory Action dated November 4, 2004, ,
and repeated in the Examiner's Answer. Thus, it appears that the Examiner is
now attempting to change the grounds of rejection by bringing into
consideration the question of whether there is inherent disclosure in the cited
references” (Reply Br. 5).
Principles of Law
A new ground of rejection occurs when the Examiner and the Board
rejected a claim for different reasons. In re Kumar, 418 F.3d 1361, 1368
(Fed. Cir. 2005), citing In re Waymouth, 486 F.2d 1058, 1060-61 (CCPA
1973).
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Appeal 2008-005974
Application 09/839,065

“[T]he ultimate criterion of whether a rejection is considered ‘new’ in
a decision by the board is whether appellants have had fair opportunity to
react to the thrust of the rejection.” In re Kronig, 539 F.2d 1300, 1302
(CCPA 1976).
Analysis
Appellants contend that “[n]ever in the course of prosecution does the
Examiner claim that the ‘shapeable’ limitation is a material property of the
recited device, and never does the Examiner assert the inherency of this
limitation in Samson” (Req. Reh’g 3). Appellants contend that “[t]his is a
substantially different basis for the rejections than product-by-process
reasoning advanced by the Examiner. Significantly, Appellants never had an
opportunity to respond to a rejection based on inherency because such a
rejection was, prior to the Decision on Appeal, never applied” (Req. Reh’g
3).
However, the record reflects that the Examiner, in the first Final
Rejection, noted that the catheter “would have to be shapeable” (Final Rej.
2/25/03; FF 1; emphasis added). While the Examiner also stated in the
second Final Rejection that the limitation was a “product-by-process”
limitation, that Final rejection also found that the “catheter of Sampson will
perform the same function of the applicant's claimed invention” (Final Rej.
1/28/04 6; FF 2-3).
In the Advisory Action and the Examiner’s Answer, the Examiner
clearly relied upon the inherency doctrine, repeatedly citing to sections of
MPEP § 2112, which exclusively discusses the inherency doctrine (FF 4-8).
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The Examiner also referred to the central inherency teaching in the court’s
decision in Best (FF 8).
Appellants were clearly placed on notice of this reliance on the
inherency doctrine, as they referred to the inherency doctrine in the Reply
Brief, noting that “[t]he Examiner cites sections 2112.01 (Composition,
Product and Apparatus Claims) as well as 2112.02 (Process Claims), both of
which fall within MPEP 2112, which is the MPEP section for Inherency
Rejections” (Reply Br. 5; FF 9). In the Reply Brief, Appellants contend that
prior to the advisory and Examiner’s Answer, inherency was never raised
and was a change in the grounds of rejection (FF 10). However, Appellants
were clearly placed on notice of the reliance by the Examiner on the
inherency doctrine at least by the Advisory Action, if not earlier (FF 1-8).
Appellants did not request that prosecution be reopened under 37
C.F.R. § 41.39(b)(1). In fact, Appellants filed a Reply Brief which
specifically addressed this issue (FF 9-10).
Consequently, we find that Appellants were placed on notice by the
Examiner, at least as of the Advisory Action, and had a fair opportunity to
address the inherency issue in both their Appeal Brief and in their Reply
Brief. See In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976) (“[T]he ultimate
criterion of whether a rejection is considered ‘new’ in a decision by the
board is whether appellants have had fair opportunity to react to the thrust of
the rejection.”)
Appellants’ Request for Rehearing does not point to any argument,
any evidence of record, or any legal authority, that was before us in the
Briefs, that we overlooked or misapprehended in reaching the conclusions
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set forth in the Decision. We therefore decline to revisit our earlier
conclusions.
Conclusion of Law
Our use of the doctrine of inherency in the analysis of the rejections
under 35 U.S.C. § 102(e) and 35 U.S.C. § 103(a) did not result in new
grounds of rejection.
CONCLUSION
Appellant's request for rehearing is granted to the extent that we have
reconsidered our earlier decision but denied in all other respects.
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)(2006).
DENIED
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