90008824 (B.P.A.I. Oct. 21, 2010)

Ex Parte 7229417 et al

Board of Patent Appeals and InterferencesOct 21, 2010

90008824 (B.P.A.I. Oct. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte DEVICOR MEDICAL PRODUCTS, INC. Appellant and Patent Owner ____________ Appeal 2010-009098 Reexamination Control 90/008,824 Patent 7,229,417 B2 Technology Center 3900 ____________ Before ROMULO H. DELMENDO, RICHARD M. LEBOVITZ, and JEFFREY B. ROBERTSON, Administrative Patent Judges. DELMENDO, Administrative Patent Judge. DECISION ON REQUEST FOR REHEARING1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, begins to run from the “MAIL DATE” shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-009098 Reexamination Control 90/008,824 Patent 7,229,417 B2 2 The Patent Owner requests rehearing of our October 21, 2010 Decision (hereinafter “original Decision”), in which we affirmed the Examiner’s final rejection under 35 U.S.C. § 103(a) of claims 1, 5, 8, 12, 15, 20, and 21 (Request for Rehearing filed December 20, 2010, hereinafter “Req. Reh’g”). We DENY the Patent Owner’s request to modify our original Decision. The Patent Owner Failed to Argue Claim 8 Separately in Its Briefs We start with the Patent Owner’s procedural challenge that we erred in failing to consider claim 8 separately (Req. Reh’g 4-5). According to the Patent Owner, claim 8 was argued separately on page 2 of its Reply Brief filed June 18, 2010 (Req. Reh’g 4-5). In particular, the Patent Owner now focuses on the “percutaneously” limitation of claim 8 as a basis for separate patentability (id.). The Patent Owner’s argument is not persuasive. The limitation in claim 8 that now forms the basis of the Patent Owner’s new argument on rehearing recites: “taking a tissue sample percutaneously from a breast of a patient to create a biopsy site within the breast” (underlining shows amendments relative to the claim of the original patent). In its Appeal Brief, filed February 1, 2010, the Patent Owner’s sole argument against claim 8 was: “For all the reasons expressed above [with respect to claims 1, 5, 15, 20, and 21], it is respectfully submitted that the combined teachings of Nabai and Anderson would not motivate a person having ordinary skill in the art to substitute Lee’s air contrast marker with a biodegradable radiodense implant Appeal 2010-009098 Reexamination Control 90/008,824 Patent 7,229,417 B2 3 in breast biopsies” (App. Br. 16). No discussion reasonably related to the newly disputed limitation in claim 8 is found under the heading “CLAIMS 8 AND 12 ARE NOT OBVIOUS OVER LEE IN VIEW OF NABAI AND ANDERSON” (id.). In a similar fashion, page 2 of the Reply Brief lacks any meaningful discussion that may reasonably be considered as related to the newly disputed limitation (“percutaneously”) in claim 8.2 Under these circumstances, we appropriately held that claim 8 was not separately argued within the meaning of 37 C.F.R. § 41.37(c)(1)(vii). The Board Did Not Enter a New Ground of Rejection The Patent Owner contends that we “did not adopt reasoning that is in any way similar to the reasoning that the Examiner relied upon in making the rejections” (Req. Reh’g 2). According to the Patent Owner, we “relied solely upon Anderson[3],” whereas the Examiner “relied principally upon the Nabai[4] reference which teaches a punch-like device for performing a skin biopsy” (id.). We disagree. A useful test for determining what constitutes a new ground of rejection is whether: (1) “[t]he basic thrust of the rejection at the examiner and board level was the same”; and (2) the appellant had a “fair 2 The Patent Owner asserts that claim 8 was argued separately at oral hearing (Req. Reh’g 1). Even if the Patent Owner is correct, that would not support its position, because the relevant rule limits the arguments made at oral hearing to those found in the briefs, except for special circumstances not present here. See 37 C.F.R. § 41.47(e)(1). [3] United States Patent 4,832,686 issued to Anderson on May 23, 1989. [4] United States Patent 5,388,588 issued to Nabai on February 14, 1995. Appeal 2010-009098 Reexamination Control 90/008,824 Patent 7,229,417 B2 4 opportunity to react to that rejection.” In re Kronig, 539 F.2d 1300, 1302 (CCPA 1976). In this case, the Examiner relied on the combined teachings of three prior art references including Anderson (Ans. 5 and 8). Furthermore, the Examiner made extensive factual findings regarding Anderson’s teachings (Ans. 6, 9, 12; Final Office Action mailed March 10, 2009 at 5, 8-9). The Patent Owner had ample opportunity to respond to those findings, which the Examiner made explicit on the record. And, indeed, the record reveals that Patent Owner did so by attempting to distinguish the claimed invention over Anderson’s teachings (App. Br. 13-15). These facts directly refute the Patent Owner’s argument that our affirmance constituted a new ground of rejection. While the Examiner placed special emphasis on Anderson’s teachings regarding radiopaque materials (Ans. 18, 19-20), such emphasis was made in the context of responding to the Patent Owner’s arguments against the combination of Nabai with Anderson. Here, the Examiner also directed the Patent Owner’s attention to other teachings found in Anderson as a whole. See Kronig, 539 F.2d at 1302 (no new ground of rejection where Board limited its discussion to three of four applied references). Therefore, we decline to designate our affirmance as a new ground of rejection. Claim 1 Reads on Anderson’s Method for Breast Cancer Patients The Patent Owner argues for the first time that Anderson’s “radiodense implant cannot be ‘positioned within’ the biopsy site as the claim requires, because “[i]n Anderson’s procedure, the biopsy site is totally Appeal 2010-009098 Reexamination Control 90/008,824 Patent 7,229,417 B2 5 eradicated upon removing the tumor . . . .” (Req. Reh’g 3). According to the Patent Owner, “[t]he biopsy site no longer exists” (id.). We find this argument unpersuasive as well. The Patent Owner did not demonstrate that the meaning of the term “biopsy site,” when interpreted in light of the ‘417 Patent Specification as a whole (including, e.g., col. 2, ll. 20-27; col. 4, ll. 4-10 and 20-25; col. 12, ll. 2-7; col. 13, ll. 28-35), supports the Patent Owner’s argument. DECISION While we have reconsidered certain aspects of our original Decision in light of the Patent Owner’s arguments, we decline to modify our original Decision in any respect. DENIED rvb Patent Owner: THOMPSON HINE L.L.P. INTELLECTUAL PROPERTY GROUP P.O. BOX 8801 DAYTON, OH 45401-8801 Third Party Requester: DOUGLAS R. HANSCOM JONES, TULLAR & COOPER, P.C. 2001 JEFFERSON DAVIS HIGHWAY SUITE 1002 ARLINGTON, VA 22202