2020000800 (P.T.A.B. Jan. 4, 2021)

BIOTRONIK AG

Patent Trials and Appeals BoardJan 4, 2021

2020000800 (P.T.A.B. Jan. 4, 2021)

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. 15/262,957 09/12/2016 Ullrich Bayer 4840.124365 8867 24978 7590 01/04/2021 GREER, BURNS & CRAIN, LTD 300 S. WACKER DR. SUITE 2500 CHICAGO, IL 60606 EXAMINER WOZNICKI, JACQUELINE ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 01/04/2021 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): docket@gbclaw.net ptomail@gbclaw.net verify@gbclaw.net PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ULLRICH BAYER Appeal 2020-000800 Application 15/262,957 Technology Center 3700 Before BRETT C. MARTIN, ANNETTE R. REIMERS, and MICHAEL L. WOODS, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–5 and 7–17. We have jurisdiction under 35 U.S.C. § 6(b). Oral arguments were heard in this case on December 15, 2020, a transcript of which will be entered into the record in due course. We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Biotronik VI Patent AG. Appeal Br. 2. Appeal 2020-000800 Application 15/262,957 2 CLAIMED SUBJECT MATTER The claims are directed to “endoprosthesis devices with x-ray markers, including endovascular stents, and particularly biodegradable stents.” Spec. 1. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An x-ray marker for an endoprosthesis, consisting of: a hollow cylinder consisting of a first radiopaque metal, the first radiopaque metal consisting of tungsten, tantalum or alloys thereof; a marker element fixedly connected to the hollow cylinder and arranged inside the hollow cylinder, the marker element consisting of a second radiopaque metal or an alloy thereof, and an electrically non-conductive material located between the marker element and the hollow cylinder. REFERENCE The prior art relied upon by the Examiner is: Name Reference Date Bayer US 2011/0319982 A1 Dec. 29, 2011 REJECTIONS Claims 1–5 and 7–15 stand rejected under 35 U.S.C. § 112, first paragraph, as lacking proper written description. Final Act. 4 Claims 16 and 17 are rejected under 35 U.S.C. § 103 as being unpatentable over Bayer. Id. Appeal 2020-000800 Application 15/262,957 3 OPINION Written Description The Examiner rejects claims 1–5 and 7–15 as failing the written description requirement due to the recitation in the preamble of “consisting of.” According to the Examiner, the use of this phrase is analogous to the claiming of a negative limitation and that “[a]ny negative limitation or exclusionary proviso must have basis in the original disclosure.” Ans. 7 (citing MPEP § 2173.05(i)). We disagree. Although there is an exclusionary aspect in the use of the phrase “consisting of,” we do not agree that this phrase, which is common in patent parlance as a closed-ended limitation, should be treated the same as a negative limitation. The issue with written description is whether the patent owner had possession of the claimed invention. Here, the drawings and Specification disclose only a marker consisting of the three claimed limitations. As such, Appellant clearly had possession of a device that consists of the claimed limitations. We do not agree that an additional explicit disclosure stating that the device can only have these limitations or that other limitations are excluded is necessary when using the phrase “consisting of.” Furthermore, the Examiner’s example of a coating not being excluded by the Specification is inapt. The coating would actually be an addition to the marker. The marker would still consist of only the three claimed elements, it would just then be a marker with a coating. Because we disagree with the Examiner’s treatment of “consisting of” as a negative limitation, we do not sustain the Examiner’s written description rejection. Appeal 2020-000800 Application 15/262,957 4 Obviousness The Examiner rejects claims 16 and 17 as unpatentable over Bayer. According to the Examiner, Bayer discloses the use of an electrically non- conductive material 20, but fails to teach that this element is located between the marker element and the hollow cylinder as claimed. Ans. 4. The Examiner relies on Bayer’s teaching “that it is known to attach various metallic elements together with polymeric (non-conductive) materials.” Id. (citing Bayer ¶¶ 23, 25). As pointed out by Appellant, “[t]he Examiner avoids noticing, however, that this cited portion of Bayer supports only using the polymeric adhesives to fasten the entire X-ray marker to the implant body to avoid stresses that result from processes such as crimping and riveting.” Appeal Br. 7 (citing Bayer ¶ 24). Although we would not go so far, as Appellant does, in stating that Bayer teaches away from the use of adhesive in the marker, we do agree that Bayer has no need of adhesive because Bayer discloses “a substantially hollow-cylindrical tungsten layer 35 that encloses, in the form of a jacket, a substantially cylindrical core 36.” Bayer ¶ 60; see also Appeal Br. 7. We do not agree that the general disclosure of an adhesive would make it obvious to one of skill in the art to use such an adhesive in a location where there is no need for one, such as within Bayer’s marker itself. Absent some evidence of the need for an adhesive used in the marker itself as claimed in each of claims 16 and 17, we do not sustain the Examiner’s rejection. CONCLUSION The Examiner’s rejections are REVERSED. More specifically, Appeal 2020-000800 Application 15/262,957 5 DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 16, 17 103 Bayer 16, 17 1–5, 7–15 112, first paragraph Written Description 1–5, 7–15 Overall Outcome 1–5, 7–17 REVERSED