Ex parte Eberhardt

Board of Patent Appeals and Interferences

Sep 28, 2001

08570373 (B.P.A.I. Sep. 28, 2001)

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written for publication and is not binding precedent of the Board.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. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte CAROL E. EBERHARDT
_____________
Appeal No. 2000-0897
Application No. 08/570,373
______________
ON BRIEF
_______________
Before ABRAMS, STAAB, and NASE, Administrative Patent Judges.
STAAB, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection
of claims 1, 3-9, 11-15, 22 and 23, all the claims pending in
this application.
The claims on appeal are drawn to a stented bioprosthetic
heart valve, and are reproduced in the appendix to appellant’s
brief.
Appeal No. 2000-0897
Application No. 08/570,373
1Claims 22 and 23 appear to have been inadvertently not
included in the statement of this rejection in the examiner’s
answer.
2
The references applied in the final rejection are:
Angell et al. (Angell) 4,035,849 Jul. 19,
1977
Carpentier et al. (Carpentier) 4,106,129 Aug. 15,
1978
Wain GB 2 136 533 A Sep. 19,
1984
(published Great Britain Patent Application)
The claims on appeal stand finally rejection under 35
U.S.C. § 103 as unpatentable over the following combinations
of references:
(1) Claims 1, 3-5, 8, 9, 11-13, 22 and 23 Carpentier in
view of Wain;1
(2) Claims 6, 7, 14 and 15, Carpentier in view of Wain
and Angell.
On page 2 of the brief, appellant expressly and
unequivocally states that the claims stand or fall together.
Therefore, we select claim 1 as the representative claim and
will decide this appeal on the basis of that claim alone.
Claim 1 is drawn to a bioprosthetic heart valve
comprising a stent having an annular frame defined by a
Appeal No. 2000-0897
Application No. 08/570,373
3
support rail (element 36 in Figure 7), and a biological valve
member (element 22 in Figure 7) defining a tubular wall and a
plurality of leaflets. The claim limitation that is the focus
of this appeal is the requirement that the biological valve
member extends “directly underneath, but not . . . around, the
support rail.”
The examiner found (answer, page 3) that “[t]he
difference between Carpentier and the claimed invention is the
placement of the biological valve member to extend to but not
around the support rail.” The examiner also found (answer,
page 3) that the biological valve member of Wain “extends to
but not around the support rail to permit a larger valve
orifice.” Based on these findings, the examiner concluded
that it would have been obvious to one of ordinary skill in
the art “to have located the biological valve member of
Carpentier to extend to but not around the support rail,
because this placement would have enabled the Carpentier
device to form a larger valve orifice as taught by GB ‘533
(Wain).” Implicit in the above is the examiner’s position
that the modified Carpentier valve member would correspond to
the claimed heart valve in all respects.
Appeal No. 2000-0897
Application No. 08/570,373
4
Appellant does not appear to dispute the examiner’s
determination that it would have been obvious to locate the
biological valve member of Carpentier so that it extends to
but not around the support rail in view of Wain’s teachings.
Appellant contends, however, that the claimed subject matter
would not result even when Carpentier is so modified. In
particular, appellant asserts that neither of the applied
references teaches or suggests a biological valve member that
extends “directly underneath” the support rail. More
specifically, appellant argues (brief, pages 2-3) that
each of the cited references discloses a structure
in which a mandatory structural member other than
the biological tissue is located directly underneath
the support rail. The combined teachings of the
references would, therefore, produce a structure
which also had a mandatory structural member other
than the biological tissue located directly
underneath the support rail. The claimed invention
requires the exact opposite: the claims positively
recite that the tissue is directly underneath the
support rail.
. . . . What the Examiner fails to appreciate
is that Wain’s tissue is already displaced from the
claimed position, with no suggestion at all that it
could be located directly beneath the rail . . . .
[The tissue of Wain is] displaced laterally from the
position directly underneath the rail regardless of
the longitudinal extent. Thus, when the person of
ordinary skill looks at what Wain and Carpentier et
Appeal No. 2000-0897
Application No. 08/570,373
5
al. teach when each is read as a whole, there is
simply no suggestion that the tissue could be
located anyplace other than positioned to the inside
of the rail, as shown in each reference, and
extending longitudinally “to but not around the
support rail” as shown by Wain.
Of critical importance in this appeal is the meaning of
the words “directly underneath” found in the last line of
claim 1. It is well settled that during examination
proceedings, claims are to be given their broadest reasonable
interpretation, and that limitations are not to be read into
them from the specification. In re Hyatt, 211 F.3d 1367,
1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000), In re Van Geuns,
988 F.2d 1181, 1184, 26 USPQ2d 1057, 1059 (Fed. Cir. 1993).
Applying these principles to the present case, we conclude
that the broadest reasonable interpretation of the claim
limitation calling for the biological valve member to extend
“directly underneath” the support wire is that at least a
portion of the valve member lies adjacent to and below the
support wire. We do not view this claim language as requiring
(1) that the valve member is the only valve element located
under the support rail, or (2) that the valve member is
centered on the support rail, and/or (3) that a portion of the
Appeal No. 2000-0897
Application No. 08/570,373
6
valve member may not extend laterally beyond the support rail.
In particular with respect to (3), it would appear from the
discussion on page 9, lines 11-22, of appellant’s
specification that appellant’s tubular wall 20 (i.e.,
biological valve member) necessarily extends laterally beyond
the support wire, at least to some extent.
Looking now at the mitral valve illustrated in Figure 10
of Carpentier, we note that the valve includes a wire frame 16
that corresponds to the claimed support rail, and graft tissue
12 that corresponds to the claimed biological valve member.
As can be seen upon inspection of the upper left corner of
Figure 10, a portion of tissue 12 extends laterally to the
side and partially around wire 16, while another portion of
tissue 12 extends adjacent to and below wire 16. Based on
these findings and on our interpretation of the meaning of the
term “directly underneath,” we conclude that the biological
tissue 12 of Carpentier’s Figure 10 mitral valve extends
“directly underneath” the wire support 16 within the broad
meaning of that term. Hence, when Carpentier’s Figure 10
valve is modified in the manner proposed by the examiner,
Appeal No. 2000-0897
Application No. 08/570,373
2We reiterate that appellant does not appear to dispute
the examiner’s position that this modification of Carpentier
would have been obvious in view of Wain’s teachings.
7
namely by locating the member to extend to but not around the
support wire 16,2 Carpentier’s modified tissue would provide a
complete response to the requirement of claim 1 that the
biological valve member extends “directly underneath, but not
extending around, the support rail.”
In light of the foregoing, the standing rejection of
claim 1 as being unpatentable over Carpentier in view of Wain
is sustained.
Appeal No. 2000-0897
Application No. 08/570,373
8
In that appellant has stated that all the claims stand or
fall together, the standing rejection of claims 3-5, 8, 9, 11-
13, 22 and 23 as being unpatentable over Carpentier in view of
Wain, and the standing rejection of claims 6, 7, 14 and 15 as
being unpatentable over Carpentier in view of Wain and Angell,
are also sustained.
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
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
LJS:hh
Appeal No. 2000-0897
Application No. 08/570,373
9
MEDTRONIC, INC.
PETER FORREST, MS 301
7000 CENTRAL AVE., N.E.
MINNEAPOLIS, MN 55432