Ex Parte Boyle et al

Board of Patent Appeals and Interferences

Jun 20, 2011

10662697 (B.P.A.I. Jun. 20, 2011)

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.
10/662,697 09/15/2003 William J. Boyle ACS 65470 (2309D) 9777
24201 7590 06/20/2011
FULWIDER PATTON LLP
HOWARD HUGHES CENTER
6060 CENTER DRIVE, TENTH FLOOR
LOS ANGELES, CA 90045
EXAMINER
TRUONG, KEVIN THAO
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
06/20/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte WILLIAM J. BOYLE, BENJAMIN C. HUTER, CHARLES R.
PETERSON, DONALD E. SCHWARTEN, and RICHARD S. STACK
____________________

Appeal 2009-006121
Application 10/662,697
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, PHILLIP J. KAUFFMAN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-006121
Application 10/662,697
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 35-74. Claims 1-34 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).

The Invention
Claim 35, reproduced below with added emphasis, is illustrative of the
claimed subject matter.
35. A system for recovering an embolic protection device
which includes a guide wire and expandable filter disposed
thereon from a body vessel, comprising:
an inner catheter having a distal portion and a proximal
end and being moveable along the guide wire, the distal portion
including a length of flexible tubing;
a control handle attached to the proximal end of the inner
catheter;
a recovery sheath having a distal end and a proximal end;
and
a control handle attached to the proximal end of the
recovery sheath, wherein the inner catheter is capable of being
loaded inside the recovery sheath with the distal portion of the
inner catheter extending distally beyond the distal end of the
recovery sheath when the inner catheter and recovery sheath are
being advanced along the guide wire for placement in proximity
to the expandable filter of the embolic protection device, the
recovery sheath having sufficient column strength to collapse
the expandable filter when advanced over the expandable filter
and the distal portion of the inner catheter has sufficient
length to allow the distal end of the recovery sheath to track
thereover to reduce the possibility that the recovery sheath will
straighten the body vessel when deployed in a curved portion
of the body vessel.

Appeal 2009-006121
Application 10/662,697
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References
The Examiner relies upon the following prior art references:
Heyn
Daniel
US 5,201,757
US 6,171,327 B1
Apr. 13, 1993
Jan. 9, 2001

Rejections
I. Claims 35-40, 42-50, and 52-74 are rejected under 35 U.S.C. §
102(e) as anticipated by Daniel.
II. Claims 41 and 51 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Daniel and Heyn.
III. Claim 38 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Daniel.

SUMMARY OF DECISION
We REVERSE and enter a NEW GROUND of REJECTION.

OPINION
The main dispute in this case is whether Daniel describes an inner
catheter (inner member 172) with “sufficient length to allow the distal end of
the recovery sheath to track thereover to reduce the possibility that the
recovery sheath will straighten the body vessel when deployed in a curved
portion of the body vessel,” as required by independent claims 35, 45, 54,
and 68. See Appeal Br. 12-13; Ans. 7-9. Appellants argue that the inner
catheter in Daniel is not capable of meeting the requirement of being a
“sufficient length” to achieve the function of reducing the possibility of
straightening a vessel. Reply Br. 6 (“the term ‘sufficient length’ [means a
distal portion of a catheter] must be long enough to achieve this function”).
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Thus, Appellants’ argument begs the question of what length is “sufficient”
to reduce the possibility of straightening a vessel. See Seattle Box Co., Inc.
v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed. Cir. 1984) (when
a term of degree is used it is necessary to determine whether there is some
standard for measuring that degree). If the language of a claim is such that a
person of ordinary skill in the art could not interpret the metes and bounds of
the claim so as to understand how to avoid infringement, a rejection of the
claim under 35 U.S.C. § 112, second paragraph, is appropriate.
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986); see Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1350 (Fed. Cir. 2005) (“Some objective standard must be provided in order
to allow the public to determine the scope of the claimed invention.”).
The distal portion of an inner catheter’s length is “sufficient,”
according to the claims, if it satisfies the function of “reduc[ing] the
possibility … [the] sheath will straighten the body vessel.” Thus, as
suggested by Appellants, the claims’ point of novelty lies within functional
language. See Halliburton Energy Serv., Inc., v. M-I LLC, 514 F.3d 1244,
1255 (Fed. Cir. 2008) (“a vice of functional claiming occurs … ‘when …
conveniently functional language [is used] at the exact point of novelty.’”)
(citing General Electric Co. v. Wabash Appliance Corp., 304 U.S. 364, 371
(1938)). In this case, the claims do not describe what structure(s) is
necessary to satisfy the claimed function. Therefore, we turn to the
Specification. See Orthokinetics, Inc., 806 F.2d at 1576 (the test for
definiteness under 35 U.S.C. § 112, second paragraph, is whether “those
skilled in the art would understand what is claimed when the claim is read in
light of the specification”) (citations omitted); Halliburton, 514 F.3d at
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Application 10/662,697
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1255-56 (discussing various ways the specification may “resolve the
ambiguities of a functional limitation”).
Appellants cite to paragraph 28 of the Specification as providing
support for this portion of the claims. See Appeal Br. 8-10. However,
reviewing the Specification, we do not find any discussion about a
“sufficient length” for the distal end of the inner catheter, let alone a
“sufficient length to allow the distal end of the recovery sheath to track
thereover to reduce the possibility that the recovery sheath will straighten the
body vessel when deployed in a curved portion of the body vessel.”
Therefore, the Specification does not resolve the ambiguities of the claim.
In fact, we instead find that the Specification describes the stiffness and
flexibility of the inner catheter as helping to reduce straightening. Spec. 28;
see also Appeal Br. 7 (noting the summary of claimed subject matter
describes stiffness and flexibility as affecting straightening, not length).
Furthermore, the Specification does not provide a standard for
determining the amount of stiffness and/or flexibility that reduces
straightening, nor does the Specification provide a metric for determining
what “reduc[ing] the possibility” amounts to, or even what amount of
straightening is allowable. Indeed, a person has variously-sized vessels in
his or her body, with various curvatures and physical characteristics – all of
which may differ from person to person. Thus, a wide range of factors could
affect whether a particular length may be sufficient to “reduce the
possibility” of straightening. “When a proposed construction requires that
an artisan make a separate infringement determination for every set of
circumstances in which the [invention] may be used, and when such
determinations are likely to result in differing outcomes (sometimes
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Application 10/662,697
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infringing and sometimes not), that construction is likely to be indefinite.”
Halliburton, 514 F.3d at 1254-55.
In light of the above, we find that independent claims 35, 45, 54, and
68 are indefinite because there is no sufficient basis to evaluate whether a
particular distal end of an inner catheter has a “sufficient length” as required
by the claims. See Orthokinetics, 806 F.2d at 1576; Datamize, 417 F.3d at
1350. Because the limitation is indefinite, the Examiner’s rejections under
§§ 102 and 103 must fall because they are necessarily based on a speculative
assumption as to the meaning of the claims. In re Steele, 305 F.2d 859, 862-
63 (CCPA 1962). It should be understood, however, that our decision in this
regard is based solely on the indefiniteness of the claimed subject matter,
and does not reflect on the adequacy of the prior art evidence applied in
support of the rejection.

NEW GROUNDS OF REJECTION
Pursuant to our authority under 37 C.F.R. § 41.50(b), for the reasons
outlined above, we make the following new ground of rejection:
Claims 35-74 are rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.

DECISION
We reverse the Examiner’s decision regarding claims 35-74. We
enter new grounds of rejection for claims 35-74.

FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner.…

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record.…
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)

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