Ex Parte Drasler et al

Board of Patent Appeals and Interferences

Sep 25, 2002

08349665 (B.P.A.I. Sep. 25, 2002)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 36
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM J. DRASLER, ROBERT G. DUTCHER,
MARK L. JENSON, JOSEPH M. THIELEN
and EMMANUIL L. PROTONOTARIOS
____________
Appeal No. 1999-1964
Application No. 08/349,665
____________
ON BRIEF
____________
Before ABRAMS, STAAB, and BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 37-57,
which are all of the claims pending in this application.
We AFFIRM-IN-PART.
Appeal No. 1999-1964
Application No. 08/349,665
Page 2
BACKGROUND
The appellants’ invention relates to a method for breaking apart and removing
thrombus or other tissue from a body vessel or cavity. An understanding of the
invention can be derived from a reading of exemplary claim 37, which appears in the
appendix to the Brief.
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Kensey 4,790,813 Dec. 13, 1988
Neracher 5,135,482 Aug 4, 1992
(filed Jun. 8, 1989)
Claims 37, 38 and 41-57 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Kensey.
Claims 39-45 and 48-50 stand rejected under 35 U.S.C. § 102(e) as being
anticipated by Neracher.
Rather than reiterate the conflicting viewpoints advanced by the examiner and
the appellants regarding the above-noted rejections, we make reference to the Answer
(Paper No. 25) for the examiner's complete reasoning in support of the rejections, and
to the Brief (Paper No. 23) and Reply Brief (Paper No. 27) for the appellants’ arguments
thereagainst.
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Application No. 08/349,665
Page 3
1Anticipation is established only when a single prior art reference discloses, either expressly or
under the principles of inherency, each and every element of the claimed invention. See, for example, In
re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed. Cir. 1994) and In re Spada, 911 F.2d
705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Anticipation by a prior art reference does not require
either the inventive concept of the claimed subject matter or recognition of inherent properties that may be
possessed by the reference. See Verdegaal Brothers Inc. v. Union Oil Co. of California, 814 F.2d 628,
633, 2 USPQ2d 1051, 1054 (Fed. Cir. 1987). Nor does anticipation require that the reference teach what
the applicant is claiming, but only that the claim on appeal "read on" something disclosed in the reference,
i.e., all limitations of the claim are found in the reference. See Kalman v. Kimberly-Clark Corp, 713 F.2d
760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert. denied, 465 U.S. 1026 (1984).
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
The Rejection Based Upon Kensey
Independent claims 37 and 38 and dependent claims 41-57 stand rejected as
being anticipated1 by Kensey under 35 U.S.C. § 102(b). Kensey discloses an
apparatus for removing deposits from arteries and the like. With reference particularly
to Figures 2 and 5, the Kensey apparatus comprises a tubular member provided with a
pressurized liquid supply passage 30 and a return passage 32. At the distal end of the
tubular member is a cutting wheel 58 that is caused to rotate by the action of
pressurized fluid emanating from passage 30, which wheel cuts plaque from the inside
of the vessel as it rotates. Owing to the orientation of passages in the cutting wheel
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Application No. 08/349,665
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2It is well settled the use of the term "comprising" in a claim opens the claim to inclusion of
elements or steps other than those recited in the claim. In re Hunter, 288 F.2d 930, 932, 129 USPQ 225,
226 (CCPA 1961).
and in support head 36, pressurized fluid passes through turbine blades 76 to turn the
cutting wheel, and then is caused to reverse its direction, at which point its flow through
holes 78 induces return flow to the proximal end of the device, acting as an axial flow
pump, whereby
[t]he return flow will serve to aspirate the particles of plaque being cut
away by the rotating cutting head 58, and the pressure differential created
by application of positive pressure through the annular passageway 30 will
also serve to pull the plaque 20 into a cutting position in the path of cutting
blades 70 (column 5, lines 45-50, emphasis added).
Kensey states that “[i]f necessary, negative pressure can be applied at the proximal
end” of the return tube (column 5, lines 43-45; emphasis added), which indicates that
providing suction to the proximal end of the return tube is an option. It therefore is clear
that the fluid jets emanating from the end of the tubular member, on their own, “attract”
the thrombus toward the tubular member, as is required by claim 37, and “help drive”
the thrombus toward the tubular member, as required by claim 38. Since these claims
are cast in “comprising” format, it matters not that the Kensey device and method
incorporate other elements and steps.2
The only argument advanced by the appellants with regard to the rejection of
claims 37 and 38 is that the fluid jets in Kensey simply cause the cutter to rotate and do
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Application No. 08/349,665
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not attract or help thrombus toward the cutter (Brief, page 6; Reply Brief, page 3). In
view of the explicit teachings of Kensey set forth in the preceding paragraph, we find
this argument not to be persuasive.
We therefore conclude that the methods recited in claims 37 and 38 are
anticipated by Kensey, and the rejection will be sustained. Since the appellants have
not argued the merits of claims 41-47 and 49-57, which are dependent from both
independent claims, they are grouped with claims 37 and 38, and fall therewith.
However, we reach the opposite conclusion with regard to claim 48, which also
depends from claims 37 and 38. Claim 48 recites the steps of connecting the second
(discharge) passage to a metering device “which controls the rate of flow of fluid and
thrombus or other material in said second passage,” and “metering the removal of
thrombus or other material . . . at a rate less than the rate which would result without
metering” (emphasis added). No such teaching is disclosed in Kensey. If an auxiliary
device is to be used in the discharge passage, Kensey teaches that it will apply
negative pressure, which is the antithesis of the steps recited in claim 48. The rejection
of claim 48 as being anticipated by Kensey is not sustained.
The Rejection Based Upon Neracher
This rejection under 35 U.S.C. § 102(e) is directed to independent claims 39 and
40 and dependent claims 41-45 and 48-50. Neracher discloses a device and method
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Application No. 08/349,665
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for removing organic deposits obstructing a vessel which comprises, with reference to
Figure 4, a first passage 11 for supplying fluid to a nozzle 22 from which emanates a
fluid jet that “strikes deposit B and destroys it, dismantles it, or disintegrates it,” after
which the liquid is evacuated together with the deposit matter by a pump (column 2,
lines 49-57). The fluid is supplied at supersonic speed under a pressure of 6 x 107 Pa
(column 1, lines 23-24, which is much greater than the 1000 psi required by claim 40.
The only argument advanced by the appellants in opposition to the examiner’s
conclusion is that the Neracher system utilizes two telescoping tubular members which
can move independently of one another, whereas “[a]pplicants’ device employs a
singular tubular member with a first and second passage” (Brief, page 7; Reply Brief,
page 5). We agree with the examiner, however, that the claim reads on the assembled
Neracher apparatus, and that the claimed method is performed by Neracher.
We therefore will sustain the rejection of claims 39 and 40, as well as this
rejection of dependent claims 41-46, 49 and 50, which depend from both independent
claims, and with regard to which the separate patentability was not argued.
As was the case with the Kensey rejection, the subject matter recited in
dependent claim 48 is not disclosed or taught by Neracher, and we therefore will not
sustain the rejection of claim 48 as being anticipated by Neracher.
CONCLUSION
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Application No. 08/349,665
Page 7
The rejection of claims 37, 38, 41-47 and 49-57 as being anticipated by Kensey
is sustained.
The rejection of claim 48 as being anticipated by Kensey is not sustained.
The rejection of claims 39-45, 49 and 50 as being anticipated by Neracher is
sustained.
The rejection of claim 48 as being anticipated by Neracher is not sustained.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a).

AFFIRMED-IN-PART
Appeal No. 1999-1964
Application No. 08/349,665
Page 8
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA:pgg
HUGH D. JAEGER
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1000 SUPERIOR BLVD.
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