Ex Parte Dubrul

Board of Patent Appeals and Interferences

Oct 23, 2003

09326412 (B.P.A.I. Oct. 23, 2003)

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not written for publication and is not binding precedent of the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. 31

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte WILLIAM R. DUBRUL
__________

Appeal No. 2003-1513
Application No. 09/326,412
___________

ON BRIEF
___________

Before OWENS, DELMENDO, and POTEATE, Administrative Patent
Judges.

DELMENDO, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on an appeal under 35 U.S.C. § 134
(2002) from the examiner’s rejection of claims 19, 20, and 22,
which are all the claims pending in the above-identified
application.1

1 Following entry of a notice of appeal and appeal brief on
Mar. 18, 2002 (papers 24 and 26), the examiner reopened
prosecution in an Office action mailed on Aug. 19, 2002 (paper
27). In reply to this Office action, the appellant requested
reinstatement of the appeal pursuant to 37 CFR § 1.193(b)(2)(ii)
Appeal No. 2003-1513
Application No. 09/326,412

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The subject matter on appeal relates to a tissue expander.2
According to the appellant (specification, page 2, lines 19-22),
“[t]he improvement comprises configuring the injection site of
the tissue expander so that it has a magnetically locatable
component in it so that it is detectable from outside of the
patient’s body.” Further details of this appealed subject
matter are recited in representative claims 19 and 22 reproduced
below:
19. A tissue expander of the type which is
implantable beneath the skin of a patient comprising:
an expandable envelope having an anterior portion
and a posterior portion and defining an inflatable
interior therebetween;
said anterior portion being unreinforced;
a magnetically locatable percutaneous filling
mechanism mounted to the anterior portion;
preventing means, along the posterior portion,
for preventing the expandable envelope from folding
over on itself during placement or implantation of the
tissue expander into a patient; and
said preventing means being substantially
coextensive with said posterior portion.

22. The tissue expander according to claim 19
wherein said preventing means comprises a posterior
portion which is thicker than the anterior portion.

(1997). (Supplemental appeal brief filed Nov. 18, 2002, paper
28, p. 1.)

2 The specification explains that “[t]issue expanders are a
common tool used by general, plastic and reconstructive
surgeons” and that “[t]hey allow the surgeon to create
additional tissue for reconstructive or cosmetic surgery...”
(Specification, p. 2, ll. 25-27.)

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Application No. 09/326,412

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The examiner relies on the following prior art references
as evidence of unpatentability:
Baker 5,104,409 Apr. 14, 1992

Boyd 5,146,933 Sep. 15, 1992

Claim 22 on appeal stands rejected under 35 U.S.C. § 112,
¶1, “as containing subject matter which was not described in the
specification in such a way as to reasonably convey to one
skilled in the relevant art that the inventor(s), at the time
the application was filed, had possession of the claimed
invention.” (Examiner’s answer mailed Jan. 24, 2003, paper 29,
page 3; Aug. 19, 2002 Office action, page 3.) Separately,
claims 19, 20, and 22 on appeal stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Boyd in view of Baker. (Id. at
pages 4-5.)
We reverse the rejection under 35 U.S.C. § 112, ¶1. We
affirm, however, the rejection under 35 U.S.C. § 103(a) for the
reasons well stated in the examiner’s answer.3
Claim Interpretation
Prior to discussing the merits of the examiner’s
rejections, we must ascertain the meaning of the limitation

3 The appellants state: “Claims 19, 20 and 22 may be
grouped together for purposes of a the [sic] rejection under 35
USC 103.” (Supplemental appeal brief, p. 2.) We therefore
Appeal No. 2003-1513
Application No. 09/326,412

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“preventing means [] for preventing the expandable envelope from
folding over on itself during placement or implantation of the
tissue expander into a patient” as recited in appealed claim 19.
Because the “preventing means” is modified by function rather
than structure, means-plus-function claim interpretation
principles as provided under 35 U.S.C. § 112, ¶6 (2002) apply.
Warner-Jenkinson Co. v. Hilton-Davis Chemical Co., 520 U.S. 17,
27, 41 USPQ2d 1865, 1870 (1997).
In describing the recited function for a preferred
embodiment, the specification explains that the base of the
expander (i.e., the posterior portion of the expander) is
“thicker or reinforced” relative to the anterior portion of the
expander. (Page 4, lines 5-18; page 11, lines 12-16.) Given
this description, we construe “preventing means [] for
preventing the expandable envelope from folding over on itself
during placement or implantation of the tissue expander into a
patient” to encompass, or read on, a base that is “thicker or
reinforced” relative to an anterior portion of the expander.
35 U.S.C. § 112, ¶1
In the Aug. 19, 2002 Office action (page 3), the examiner
held:

confine our discussion of the §103 rejection to claim 19. 37
CFR § 1.192(c)(7) (1995).
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Application No. 09/326,412

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On page 4, lines 10 and 19 of the Applicant’s
specification, the tissue expander is described as
having a “thicker portion,” but it does not state what
thicker encompasses. Claims in a pending application
are to be given their broadest reasonable
interpretation. In re Hyatt, 54 USPQ2d 1664 (Fed.
Cir. 2000). Therefore, it is not clear if one
material is made thicker at the posterior or are the
claims to be interpreted as the applicant discloses
(Fig. 1) with two different materials in the present
application.

The appellant, on the other hand, argues that the base may
be either thicker or reinforced and that claim 22 “is limited to
the situation in which the posterior portion (base) is thicker
than the anterior portion.” (Supplemental appeal brief, page
4.)
In the answer, the examiner presents an additional argument
as follows: “Claim 22 recites ‘preventing means comprises a
posterior portion which is thicker than the anterior portion,’
but fails to mention where the support is for this limitation.”
(Answer, pages 4-5.)
We cannot agree with the examiner on this issue.
As an initial matter, it is important to emphasize that the
examiner bears the initial burden of presenting a prima facie
case of unpatentability, whether it be based on prior art or on
any other ground. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). “Insofar as the written
description requirement is concerned, that burden is discharged
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Application No. 09/326,412

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by ‘presenting evidence or reasons why persons skilled in the
art would not recognize in the disclosure a description of the
invention defined by the claims.’” In re Alton, 76 F.3d 1168,
1175-76, 37 USPQ2d 1578, 1583-84 (Fed. Cir. 1996)(citing In re
Wertheim, 541 F.2d 257, 263-64, 191 USPQ 90, 97 (CCPA 1976)).
In this case, the examiner has not met the initial burden of
presenting a prima facie case of unpatentability under 35 U.S.C.
§ 112, first paragraph, written description requirement.
To satisfy the written description requirement of 35 U.S.C.
§ 112, first paragraph, the disclosure of the application as
originally filed must reasonably convey to those skilled in the
relevant art that the applicant, as of the filing date of the
original application, had possession of the claimed invention.
Alton, 76 F.3d at 1172, 37 USPQ2d at 1581; In re Kaslow, 707
F.2d 1366, 1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983). The
applicant, however, does not have to describe exactly the
subject matter claimed. Union Oil Co. of Cal. v. Atlantic
Richfield Co., 208 F.3d 989, 997, 54 USPQ2d 1227, 1232, 1233
(Fed. Cir. 2000).
Contrary to the examiner’s stated position (answer, pages
4-5), a claim does not have to point out where support may be
found in the corresponding written description. Furthermore, as
we discussed above, the present specification reasonably conveys
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to one skilled in the relevant art that the appellant had
possession of a preferred preventing means in which the base is
“thicker or reinforced” relative to the anterior portion.
Appealed claim 22 merely limits the “preventing means” to
comprise a “posterior portion which is thicker than the anterior
portion.” Thus we see no basis for alleging that appealed claim
22 lacks adequate written description.
For these reasons, we cannot uphold the examiner’s
rejection on this ground.
35 U.S.C. § 103(a)
We are in complete agreement with the examiner’s findings
and conclusions, so we adopt them as our own.
The appellant argues: “Baker describes a mammary implant
(not a tissue expander) and makes no mention of a tissue
expander anywhere in the patent.” (Supplemental appeal brief,
page 3.) This argument lacks merit. Boyd, the principal prior
art reference, teaches: “[T]here have been numerous attempts to
provide volume-adjustable, anatomically-shaped mammary implants,
including tissue-expander devices.” (Column 2, lines 59-62;
emphasis added.) Because a tissue expander is an anatomically
shaped mammary implant, one of ordinary skill in the art would
have found the requisite motivation or suggestion to combine the
teachings of Boyd and Baker.
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The appellant urges (supplemental appeal brief, page 3):
Accordingly, the art lacks even a suggestion that
there was a recognition of a need to provide folding
over preventing means. Also, there is nothing in
these two patents that discloses or suggests that it
would have been an advantage to prevent such folding
over. Lacking any recognition of such need or
advantage, there would have been no reason to modify
the tissue expander of Boyd with structure taken from
the implant of Baker.

We disagree. As pointed out by the examiner (answer, page
4), the prior art provides the requisite motivation, suggestion,
or teaching that would have led one of ordinary skill in the art
to combine the teachings of Baker and Boyd. That is, given
Baker’s teachings (column 4, lines 56-59), one of ordinary skill
in the art would have been led to reinforce the posterior
portion of Boyd’s device in order to prevent scar tissue
“contractures” and thus maintain the intended profile of the
device. Although the reason or motivation provided in the prior
art to combine the references is not the same as that of the
applicant, this does not in and of itself preclude a conclusion
of obviousness. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d
1309, 1311 (Fed. Cir. 1996); In re Dillon, 919 F.2d 688, 693, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990)(en banc).
The appellant alleges: “[I]t appears that [Baker’s]
reinforcement member 20 is a reinforcement member with respect
to the gel material within the implant and thus it need not be
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Application No. 09/326,412

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very stiff and has nothing to do with preventing folding over of
the expandable envelope.” (Supplemental appeal brief, page 3.)
We find this argument unpersuasive. As we discussed at the
outset, the present specification states that the prevention of
the “folding over” problem is accomplished by making the base
thicker or reinforced relative to the anterior portion. This
structure is precisely what is described in Baker. Accordingly,
the burden of proof was shifted to the applicant to provide
objective evidence establishing that Baker’s reinforcement
member would be incapable of performing the function recited in
appealed claim 19.4 On this point, it is well settled that when
a claimed product reasonably appears to be substantially the
same as a product disclosed in the prior art, the burden of
proof is on the applicant to prove that the prior art product
does not inherently or necessarily possess the characteristics
attributed to the claimed product. Cf. In re Schreiber, 128
F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)
(“[C]hoosing to define an element functionally, i.e., by what it
does, carries with it a risk...[W]here the Patent Office [PTO]
has reason to believe that a functional limitation asserted to

4 Baker teaches that the reinforcement member must be
sufficiently rigid to equalize external forces exerted on the
device and to maintain the intended profile of the device.
(Column 4, lines 52-59.)
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be critical for establishing novelty in the claimed subject
matter may, in fact, be an inherent characteristic of the prior
art, it possesses the authority to require the applicant to
prove that the subject matter shown to be in the prior art does
not possess the characteristic relied on.”); accord In re Spada,
911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).
Whether the rejection is based on inherency under 35 U.S.C. §
102 or on obviousness under 35 U.S.C. § 103, jointly or
alternatively, the burden of proof is the same, and its fairness
is evidenced by the PTO’s inability to manufacture products or
to obtain and compare prior art products. In re Best, 562 F.2d
at 1255, 195 USPQ at 433-34.
The appellant contends that “the much softer tapered
portion 26 [of Baker’s device] would [] lack the necessary
rigidity to cause member 20 to act as a means for preventing the
expandable element from folding over on itself during placement
or implantation.” (Supplemental appeal brief, page 3.) The
appellant’s contention, however, is based on conjecture, not
evidence.
For these reasons, we affirm.

Appeal No. 2003-1513
Application No. 09/326,412

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Summary
In summary, we reverse the examiner’s rejection under 35
U.S.C. § 112, ¶1, of appealed claim 22 as lacking written
description. We affirm, however, the rejection under 35 U.S.C.
§ 103(a) of appealed claims 19, 20, and 22 as unpatentable over
Boyd in view of Baker.
The decision of the examiner is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED

Terry J. Owens )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
Romulo H. Delmendo )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
)
Linda R. Poteate )
Administrative Patent Judge )

RHD/kis
Appeal No. 2003-1513
Application No. 09/326,412

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JAMES F. HANN
HAYNES, BEFFEL & WOLFELD
P. O. BOX 366
HALF MOON BAY, CA 94019