Ex parte CHRISTIE et al.

Board of Patent Appeals and Interferences

Feb 19, 1998

08129636 (B.P.A.I. Feb. 19, 1998)

Application for patent filed September 29, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GRANT W. CHRISTIE
and
CAROL E. EBERHARDT
_____________
Appeal No. 96-3204
Application 08/129,6361
______________
HEARD: February 3, 1998
_______________
Before ABRAMS, FRANKFORT and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 96-3204
Application 08/129,636
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 10 through 30 and 32 through 39, which are
all of the claims remaining in this application. Claims 1
through 9 and 31 have been canceled.
Appellants' invention relates to a method of fixing a
natural tissue heart valve and to a natural heart valve fixed in
accordance with the recited method. On page 1 of the
specification, it is explained that "fixation" is a procedure for
stabilizing the tissue of the heart valve against degradation. A
copy of representative claims 10, 27 and 32 may be found in
Appendix A of appellants' brief.
There are no prior art references relied upon by the
examiner in rejecting the appealed claims.
Claims 10 through 30 and 32 through 39 stand rejected
only under 35 U.S.C. § 102(c) because the examiner considers that
appellants had abandoned their invention and thus their right to
patent the subject matter now claimed.
Appeal No. 96-3204
Application 08/129,636
3
The examiner's explanation of the § 102(c) rejection
and the response to appellants' arguments appears on pages 3
through 5 of the examiner's answer (Paper No. 13, mailed
February 9, 1996). Appellants' arguments and viewpoints con-
cerning the examiner's rejection of the appealed claims are
found in the brief (Paper No. 12, filed November 6, 1995) and
in the reply brief (Paper No. 15, filed March 19, 1996).
OPINION
In arriving at our decision in this appeal, we have
carefully considered appellants' specification and claims, and
the respective positions advanced by appellants and the examiner.
As a consequence of our review, we have made the determination
that the examiner's rejection of claims 10 through 30 and 32
through 39 under 35 U.S.C. § 102(c) will not be sustained. Our
reasoning follows.
The facts giving rise to the rejection before us on
appeal are set forth on pages 3 and 4 of appellants' brief. On
page 2 of the examiner's answer, it is noted that the factual
background presented by appellants "is not contested." We have
carefully reviewed those facts and, essentially for the reasons
Appeal No. 96-3204
Application 08/129,636
4
set forth in appellants' brief and reply brief, we find that
appellants did not abandon their invention within the meaning of
35 U.S.C. § 102(c). While it is true that their first filed
application, Ser. No. 07/752,130, went abandoned for failure to
file a response to the final rejection therein, this does not
constitute or in any way alone evidence an intent to abandon the
invention on which that application was based. On the contrary,
appellants (1) during the pendency of the first filed
application, filed a PCT application (PCT/US92/06578) on the same
invention disclosed in the '130 application, (2) upon realizing
the error in allowing the first filed application to go
abandoned, filed the present application on the invention, even
though they had apparently lost their earlier filing date,
and (3) also filed a petition to revive the first filed appli-
cation --- all of which in our opinion weighs heavily against any
inference that appellants had abandoned their invention and
thereby sacrificed their right to obtain a patent on that subject
matter. In our view, the record before us clearly establishes
that applicants (Christie et al.) never lost interest in their
invention. Like appellants, we are of the view that the
examiner's reliance on the USM case (cited on page 3 of the
answer) is misplaced, since unlike in that case, there is no
Appeal No. 96-3204
Application 08/129,636
5
evidence in the case before us on appeal of an intent to
abandon the invention.
In sum, after reviewing the facts and the cases cited,
both pro and con, it is our opinion that the examiner has not
shown, by clear and convincing evidence, that appellants
abandoned their invention within the meaning of 35 U.S.C. §
102(c). Accordingly, the examiner's rejection of claims 10
through 30 and 32 through 39 is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 96-3204
Application 08/129,636
6
Peter Forrest
Patent Department, MS301
Medtronic, Inc.
7000 Central Avenue, N.E.
Minneapolis, MN 55432