Ex Parte Crow

Board of Patent Appeals and Interferences

Jan 11, 2010

10998455 (B.P.A.I. Jan. 11, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte LOREN M. CROW
____________________

Appeal 2009-004016
Application 10/998,455
Technology Center 3700
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Decided: January 11, 2010
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Before: WILLIAM F. PATE III, JENNIFER D. BAHR, and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
2 and 4-20. App. Br. 5. We have jurisdiction under 35 U.S.C. § 6(b).
The claims are directed to a device and method for incising tissue to a
pre-selected incision depth within a body conduit of a patient. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
Appeal 2009-004016
Application 10/998,455

2
1. A device for incising tissue to a pre-selected incision
depth within a body conduit of a patient, the device comprising:
a catheter;
an elongated balloon defining an axis, the balloon being
mounted on the catheter for reconfiguration between an inflated
configuration and a deflated configuration; and
a substantially straight elongated blade having a distal
end and a proximal end and defining a blade axis, with the
proximal end thereof attached to the balloon to orient the blade
in a plane with the axis of the balloon and to project a sharp
edge at the distal end of the blade in a radial direction from the
axis of the balloon when the balloon is inflated, the blade
having a blunt section positioned proximal to the sharp edge to
limit the incision of tissue by the sharp edge of the blade to the
pre-selected incision depth during a proximal movement of the
balloon in its inflated configuration. (Emphasis Added)

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Chin
Tarr
Lemelson
Crocker
US 4,768,508
US 5,085,663
US 5,728,123
US 5,843,116
Sep. 6, 1988
Feb. 4, 1992
Mar. 17, 1998
Dec. 1, 1998

Claims 1, 2, 8, 9 and 18 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Lemelson. Ans. 3.
Claims 4, 10 and 11 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Lemelson and Crocker. Ans. 4.
Claims 5, 7, 12, 16, 17 and 19 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Lemelson and Tarr. Ans. 5.
Claims 6, 13-15 and 20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Lemelson and Chin. Ans. 5.
Appeal 2009-004016
Application 10/998,455

3
OPINION
In each of the above rejections the Examiner relied upon Lemelson as
disclosing “a substantially straight elongated blade” having “a sharp edge”
and “a blunt section.” The Examiner reads Lemelson’s blade 18 in
combination with Lemelson’s blade holder 16a as the claimed “blade”
wherein blade 18 is read as the “sharp edge” of the blade and blade holder
16a is read as the “blunt section.” Ans. 3. Appellant contends that the
Examiner erred in making each of the above rejections because the
combined blade 18 and blade holder 16a of Lemelson, is not reasonably read
as a blade that is “substantially straight.” App. Br. 10-13. We agree.
A determination of anticipation, as well as obviousness, involves two
steps. First is construing the claim, a question of law, followed by, in the
case of anticipation or obviousness, a comparison of the construed claim to
the prior art. This comparison process involves fact-finding. Key
Pharmaceuticals v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998)
(citations omitted). During examination of a patent application, pending
claims are given their broadest reasonable construction consistent with the
specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am.
Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). A claim is
anticipated only if each and every element as set forth in the claim is found,
either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir.
1987).
Claims 1, 8 and 18 call for, inter alia, a substantially straight
elongated blade.
Appeal 2009-004016
Application 10/998,455

4
Lemelson shows in FIGS. 1A and 1B, a significant bend or angle
between the blade 18 and the blade holder (support arm) 16a. Since the
blade 18 and blade holder 16a of Lemelson, relied upon by the Examiner to
meet the limitation in independent claims 1, 8 and 18 requiring a “blade” has
a significant bend or angle, it is not reasonable to read that structure as
“substantially straight.”
Accordingly, Lemelson does not anticipate independent claims 1, 8
and 18. As applied by the Examiner, none of the other cited references cure
this deficiency. Accordingly we are constrained to reverse the rejections of
claims 2 and 4-7, 9-17, 19 and 20, which depend from claims 1, 8 and 18,
respectively.
DECISION
For the above reasons, the Examiner’s rejections of claims 1, 2 and
4-20 are reversed.

REVERSED

Vsh

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