Ex parte Dance et al.

Board of Patent Appeals and Interferences

Sep 10, 1999

08101989 (B.P.A.I. Sep. 10, 1999)

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(2) is not binding precedent of the Board.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. 30
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte CREG W. DANCE
and STEVEN L. OLSON
__________
Appeal No. 96-0570
Application 08/101,989
__________
REHEARING
__________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
ON REQUEST FOR REHEARING
This case comes before us again on request for rehearing
of our decision of February 12, 1998, wherein we affirmed-in-
part the examiner’s decision and added a new ground of
rejection. Five points were raised by the appellants. In
Appeal No. 96-0570
Application No. 08/101,989
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each case, we have considered the arguments presented, but we
have not been persuaded that the positions we have taken were
in error.
The Rejections Under Section 112
1. Claim 10. The problem with this claim was that it added to
the basic method “additional interventional therapeutic
procedures,” which we agreed with the examiner had not been
adequately defined in the specification. The appropriate time
to present arguments in opposition to the examiner’s
rejections is in the appeal brief, and arguments not presented
at that time will be refused consideration, unless good cause
is shown (37 CFR § 1.192(a)). The appellants chose not to
respond to this rejection at that time. Inasmuch as no
showing of good cause for this failure to act has been made,
we will not consider the arguments now presented for the first
time.
2. Claim 15. We stand by the comments we made on page 5 of
our decision.
3. Claim 17. The appellants’ offer to correct this problem
by way of amendment does not cause us to alter our position
Appeal No. 96-0570
Application No. 08/101,989
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with regard to the propriety of the rejection of the claim as
it presently stands.
The Rejection Under Section 102
The arguments raised by the appellants in the Request for
Rehearing are essentially the same as those presented in the
Brief. We have considered them in detail. However, we see no
need to further explain or alter the position we expressed on
pages 6-8 of our decision.
The Rejection Under Section 103
We stand by the explanation we presented on pages 9 and
10 of our decision, in which we treated the issues which the
appellants have raised in the Request for Rehearing. With
regard to the argument that we have taken liberties in our
interpretation of the phrase “a fixed dimension infusion
zone,” we point out that if the limitations in the
specification were required to be read into the claims there
would be no need for claims and no basis for the requirement
of 35 U.S.C. § 112 that the specification conclude with claims
Appeal No. 96-0570
Application No. 08/101,989
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particularly pointing out and distinctly claiming the subject
matter which the applicants regard as their invention. See
Sjolund v. Musland, 847 F.2d 1573, 1581, 6 USPQ2d 2020, 2027
(Fed. Cir. 1988). Since the infusion zone clearly has a
length and a diameter, it is incumbent upon the appellants to
particularly point out which of the two dimensions is limited
by the claim.
SUMMARY
The Request for Rehearing is granted to the extent that
we have reviewed our decision in the light of the arguments
set forth in the request, but it is denied insofar as altering
our decision is concerned.
DENIED
Neal E. Abrams )
Administrative Patent Judge )
)
)
)
Lawrence J. Staab ) BOARD OF
PATENT
Administrative Patent Judge ) APPEALS AND
Appeal No. 96-0570
Application No. 08/101,989
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) INTERFERENCES
)
)
Jeffrey V. Nase )
Administrative Patent Judge )
Appeal No. 96-0570
Application No. 08/101,989
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Stroud, Stroud, Willink,
Thomas & Howard
P.O. Box 2236
25 West Main Street, Ste. 300
Madison, WI 3701-2236