Ex parte Efstathio

Board of Patent Appeals and Interferences

Jan 20, 1999

08678196 (B.P.A.I. Jan. 20, 1999)

Application for patent filed July 12, 1996. According1
to appellant, the application is a continuation of Application
08/492,896, filed June 20, 1995, abandoned.
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(2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte AGATHOS A. EFSTATHIOS
_____________
Appeal No. 98-1858
Application 08/678,1961
______________
ON BRIEF
_______________
Before CALVERT, COHEN and FRANKFORT, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 98-1858
Application 08/678,196
2
This is a decision on appeal from the examiner's
final rejection of claims 1 through 20, all the claims pending
in the application.
Appellant’s invention is directed to a method of
treating valve dysfunction in a human patient by using a
marine mammal trileaflet valve (e.g., a marine mammal ventric-
ular outflow valve) as a replacement for the human patient’s
dys- functional valve, more specifically, a patient’s dysfunc-
tional aortic, mitral, tricuspid, or pulmonary valve. In
addition, the invention is directed to a “fixed, marine mammal
ventricular outflow valve” (claim 18). Claims 1, 11 and 18
are illustrative of the subject matter on appeal and a copy of
those claims may be found in Appendix A of appellant’s brief.
The prior art references of record relied upon by
the examiner as evidence of obviousness under 35 U.S.C. § 103
are:
Cumming et al. (Cumming) 4,793,344 Dec. 27, 1988
Ross 5,352,240 Oct. 4, 1994
Appeal No. 98-1858
Application 08/678,196
3
Claims 1 through 20 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Ross in view of Cumming.
According to the examiner,
Ross discloses the invention substan-
tially as claimed. Ross discloses replac-
ing a dys- functioning valve in a human
patient with an xenograft (animal tissue)
heart valve. However, Ross is silent in
regards to using a marine mammal xeno-
graft. Cumming et al
teaches the use of marine mammal xenografts
for corneal tissue replacement (see column
3, lines 13-19). It would have been obvi-
ous to one having ordinary skill in the art
to have derived a marine mammal xenograft
as taught by Cumming et al for the xeno-
graft heart valve of Ross for an ample
supply of heart valve tissue and where, for
example, other xenografts such as porcine
valves are repugnant to a portion of the
population due to religious beliefs (an-
swer, pages 2-3).
The full text of the examiner's rejection with
regard to the appealed claims and rebuttal to the arguments
presented by appellant appears in the examiner's answer (Paper
No. 15, mailed April 24, 1997). Rather than reiterate appel-
lant’s position on the obviousness issues raised in this
appeal, we make reference to the appeal brief (Paper No. 13,
Appeal No. 98-1858
Application 08/678,196
4
filed March 31, 1997) for a complete statement of appellant’s
arguments.
OPINION
Having carefully considered appellant’s specifica-
tion and claims, the applied references, and the respective
viewpoints of appellant and the examiner, we have reached the
conclusion that the examiner's rejection of claims 1 through
20 under
35 U.S.C. § 103 is not well founded and, therefore, will not
be sustained.
Like appellant, even if we assume for the sake of
argument that Cumming is analogous prior art, we find no
teaching, suggestion, or incentive in the applied Ross and
Cumming references which would have made it obvious to one of
ordinary skill in the art at the time of appellant’s invention
to use a marine mammal trileaflet valve (e.g., a marine mammal
ventricular outflow valve) as a replacement for a human pa-
tient’s dysfunctional valve, more specifically, a human pa-
Appeal No. 98-1858
Application 08/678,196
5
tient’s dysfunctional aortic, mitral, tricuspid, or pulmonary
valve. As urged by appellant, the examiner’s position is
clearly based on an improper “obvious to try” approach which
attempts to combine the generally unrelated teachings of Ross
and Cumming to
arrive at the posited obviousness determination under 35
U.S.C.
§ 103. In regard to the examiner’s rejection, we generally
agree
with appellant’s arguments as set forth on pages 9 through 18
of the brief.
With respect to independent claim 18, we find noth-
ing in Ross or Cumming which would have been suggestive of a
“fixed, marine mammal ventricular outflow valve.” However, it
appears to us that a complete marine mammal heart which has
been preserved in a fixative agent, such as glutaraldehyde,
would include a
“fixed, marine mammal ventricular outflow valve.” In this
regard, it is incomprehensible to us that at the time of
Appeal No. 98-1858
Application 08/678,196
6
appellant's invention it was unknown to preserve or "fix" a
complete marine mammal heart. It would seem prudent for the
examiner and appellant to evaluate the scope of claims 18
through 20 in this light. The present application is hereby
REMANDED to the examiner for that purpose.
For the foregoing reasons, the decision of the
examiner rejecting claims 1 through 20 under 35 U.S.C. § 103
based on the collective teachings of Ross and Cumming is
reversed.
REVERSED and REMANDED
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF
PATENT
IRWIN CHARLES COHEN ) APPEALS AND
Administrative Patent Judge ) INTERFER-
ENCES
)
)
)
Appeal No. 98-1858
Application 08/678,196
7
CHARLES E. FRANKFORT )
Administrative Patent Judge )
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