Ex Parte Buiser et al

Board of Patent Appeals and Interferences

Jul 14, 2011

10830195 (B.P.A.I. Jul. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte MARCIA BUISER, PAUL DICARLO, THOMAS V. CASEY II,
ERIN MCKENNA, and ROBERT F. RIOUX
__________

Appeal 2011-002712
Application 10/830,195
Technology Center 1600
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
composition comprising a particle chain. The Patent Examiner rejected the
claims on grounds of obviousness and non-statutory obviousness-type
double patenting. We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
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STATEMENT OF THE CASE
“The invention relates to embolization.” (Spec. 1, l. 2.) According to
the Specification, “[c]ompositions including embolic particles are used for
occluding vessels in a variety of medical applications.” (Id. at ll. 5-6.)
Claims 1-4, 11, 23-31, 49-53, 60, 62, and 63, which are all the
pending claims, are on appeal. Claim 1 is representative and reads as
follows:
1. A composition, comprising:
a particle chain having at least two connected particles and a link that
connects the at least two connected particles, wherein:
the at least two connected particles and the link are integrally
formed of PVA;1
at least one of the at least two connected particles has an
interior region with pores having a first mean size, a surface region with
pores having a second mean size, and a body region between the interior
region and the surface region, the body region with pores having a third
mean size, the third mean size being greater than the second mean size,
the first mean size is about 20 microns or more;
the second mean size is about one micron or less;
the third mean size is about 18 microns or less;
the link has an aspect ratio of at most about 1,000 and the link
has an aspect ratio of at least about 0.001;
a ratio of the diameter of one of the at least two particles to a
width of the link is at least about 0.5 and the ratio of the diameter of one of
the at least two particles to a width of the link is at most about 100;
the link has a length of at least about one micron and wherein
the link has a length of at most about 50,000 microns; and
the link has a width of at most about 0.01 inch and the link has
a width of at least 0.001 inch.

1 Polyvinyl alcohol.
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The Examiner rejected the claims as follows:
• claims 1-4, 11, 23-31, 49-53, 60, 62 and 63 under 35 U.S.C.
§ 103(a) as unpatentable over Jacobsen,2 Greene,3 and Lanphere ‘895;4
• claims 1-4, 11, 23-31, 49-53, 60, 62 and 63 on the ground of
nonstatutory obviousness-type double patenting as unpatentable over the
claims of U.S. Patent No. 7,131,997; 7,449,236; 7,462,366; 7,588,780 and
7,611,542 in view of Jacobsen and Greene; and
• claims 1-4, 11, 23-31, 49-53, 60, 62 and 63, provisionally, on the
ground of nonstatutory obviousness-type double patenting as unpatentable
over the claims of U.S. Application Serial No. 12/235,978, 12/236,051 and
10/651,475 in view of Jacobsen and Greene.
Claims 2-4, 11, 23-31, 49-53, 60, 62 and 63 have not been argued
separately and therefore stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii).

OBVIOUSNESS
The Issue

Appellants summarize their position as follows:
[A]ssuming solely for the sake of discussion, that it would have
been obvious to one skilled in the art to try to combine the
references in the manner indicated by the Examiner, the
Examiner has failed to demonstrate how the references could
have been combined. Thus, the obviousness rejection is

2 Stephen C. Jacobsen et al., US 6,530,934 B1, issued Mar. 11, 2003.
3 George R. Greene, Jr., et al., US 2002/0177855 A1, published Nov. 28,
2002.
4 Janel Lanphere et al., US 2003/0185895 A1, published Oct. 2, 2003.
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improper because the Examiner has not demonstrated that the
asserted combination of Jacobsen, Greene and Lanphere would
have enabled one skilled in the art to make the subject matter
covered by the claims.

(App. Br. 3.) According to Appellants, neither Jacobsen nor Lanphere even
disclose a process for joining particles, and the processes disclosed by
Greene would not work for Appellants’ subject matter, “at least because the
claimed subject matter requires the link and the at least [two] particles to be
integrally formed of the same material.” (Id. at 4.)
The Examiner responds that the Jacobsen patent disclosed and
claimed that the filament and bead were integrally formed, and a patent is
presumed enabled. (Ans. 12.) The Examiner also emphasized that “Greene
teaches similar porous micropellets affixed to a carrier, including use of
PVA as both micropellet and carrier.” (Id.)

Findings of Fact
1. We adopt the Examiner’s findings. (Ans. 4-13.)
2. The Examiner found that “[Jacobsen’s] beads may be integrally
formed of the material of the filament (column 4, line 24.)” (Id. at 5.)
3. Jacobsen taught: “[t]he fixed beads may even be integrally formed of
the material of the filament.” (Jacobsen, col. 4, ll. 23-24.)
4. Appellants’ Brief refers generally to Greene’s processes of making a
filamentous embolization device, but does not identify the processes.
(App. Br. 4.)
5. Greene’s abstract reads in part: “Exemplary methods for making
these devices include skewering and molding the embolizing
elements.” (Greene, Abstract.)
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Principles of Law
An obviousness rejection under 35 USC § 103 of a composition claim
is improper in “the absence of a known or obvious process for making the
claimed compounds.” In re Hoeksema, 399 F.2d 269, 274 (CCPA 1968).
In patent prosecution the examiner is entitled to reject
application claims as anticipated by a prior art patent without
conducting an inquiry into whether or not that patent is enabled
or whether or not it is the claimed material (as opposed to the
unclaimed disclosures) in that patent that are at issue. In re
Sasse, 629 F.2d 675, 681, 207 USPQ 107, 111 (C.C.P.A. 1980)
(“[W]hen the PTO cited a disclosure which expressly
anticipated the present invention ... the burden was shifted to
the applicant. He had to rebut the presumption of the operability
of [the prior art patent] by a preponderance of the evidence.”
(citation omitted)). The applicant, however, can then overcome
that rejection by proving that the relevant disclosures of the
prior art patent are not enabled. Id.

Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355 (Fed. Cir.
2003) (footnote omitted). See also, In re Paulsen, 30 F.3d 1475, 1481 n.9
(Fed. Cir. 1994).

Analysis
The evidence supports the Examiner’s finding that Jacobsen taught a
particle chain having beads integrally molded of the same material as the
connecting filament. (FF 2, 3.) That finding was sufficient to shift the
burden to Appellants to rebut Jacobsen’s presumed enablement by a
preponderance of evidence. See Amgen, 314 F.3d at 1355. Appellants direct
attention to Greene’s methods, which include molding. (FF 5.) There is no
evidentiary support offered for Appellants’ argument that Greene’s methods
would not work.
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Appellants responded to the rejection with attorney argument against
the teachings of both references, but no evidence. Attorney argument in a
brief cannot take the place of evidence. On this record, the preponderance of
the evidence supports a conclusion of prima facie obviousness.

NONSTATUTORY OBVIOUSNESS-TYPE DOUBLE PATENTING
The Examiner entered two rejections. The first rejected all the
appealed claims over the claims in five issued patents combined with
Jacobsen and Greene. The second is a provisional rejection of all appealed
claims over the claims in three copending applications combined with
Jacobsen and Greene.
Appellants “request reconsideration and reversal of each of the
obviousness-type double patenting rejections in view of the arguments
presented in the preceding section [addressing the obviousness rejection over
Jacobsen, Green, and Lanphere ‘895].” (App. Br. 5.)
The arguments presented in the Brief’s preceding section were not
persuasive of nonobviousness, and are likewise not persuasive of error in
these rejections. We therefore affirm the double patenting rejections.

SUMMARY
We affirm the rejection of claims 1-4, 11, 23-31, 49-53, 60, 62 and 63
under 35 U.S.C. § 103(a) as unpatentable over Jacobsen, Greene, and
Lanphere ‘895.
We affirm the rejection of claims 1-4, 11, 23-31, 49-53, 60, 62 and 63
on the ground of nonstatutory obviousness-type double patenting as
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unpatentable over the claims of U.S. Patent No.7, 131,997, 7,449,236,
7,462,366, 7,588,780, and 7,611,542, in view of Jacobsen and Greene.
We affirm the rejection of claims 1-4, 11, 23-31, 49-53, 60, 62 and 63,
provisionally, on the ground of nonstatutory obviousness-type double
patenting as unpatentable over the claims of U.S. Application Serial No.
12/235,978, 12/236,051, and 10/651,475, in view of Jacobsen and Greene.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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