Ex Parte Field

Board of Patent Appeals and Interferences

Aug 15, 2011

11538918 (B.P.A.I. Aug. 15, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte STEVEN E. FIELD
____________________

Appeal 2010-001674
Application 11/538,918
Technology Center 3700
____________________

Before: LINDA E. HORNER, STEVEN D. A. MCCARTHY, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-001674
Application 11/538,918
2
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1-
11, 14-17, 19-22, 24, 26-33 and 361. App. Br. 5. We have jurisdiction under
35 U.S.C. § 6(b).
We reverse.
The claims are directed to a drug-eluting tissue marker. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. A tissue marker, comprising:
a marker portion configured to mark a site within a soft
tissue mass, the marker portion having a length extending along
a centerline of the marker portion between a first end and a
second end and having a substantially continuous wall along the
length, the substantially continuous wall bounding a hollow
interior; and
a drug-eluting portion comprising a drug, wherein the
drug-eluting portion is disposed within the hollow interior;
wherein the length of the marker portion is greater than
an average diameter of the hollow interior and wherein the
substantially continuous wall includes at least one opening
adapted to allow the drug to pass out of the hollow interior.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Fisher
Chesbrough
US 6,350,244 B1
US 6,575,991 B1
Feb. 26, 2002
Jun. 10, 2003

1 The Advisory Action mailed Feb. 4, 2009 indicates that the amendment of
Jan. 12, 2009 will be entered for purposes of appeal. The Answer and
Appeal Brief correctly indicate the status of the claims. However, the
Communication mailed by the Examiner on Jul. 30, 2009 incorrectly lists
claims 23, 34, 35 and 37 as rejected when those claims were previously
cancelled.
Appeal 2010-001674
Application 11/538,918
3
REJECTION
Claims 1-11, 14-17, 19-22, 24, 26-33 and 36 rejected under 35 U.S.C.
§ 103(a) as unpatentable over Chesbrough and Fisher. Ans. 3.

OPINION
[T]he PTO applies to the verbiage of the proposed claims
the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
We agree with Appellant that in rejecting independent claims 1, 20,
26 and 36 it was unreasonable for the Examiner to interpret Chesbrough’s
hollow interior 108 as the claimed “opening” or “openings.” App. Br. 16-17.
The claimed opening(s) must be included in the substantially continuous
wall that extends along the length of the marker portion. The Examiner
contends that “that openings extend through the wall of the marker[] are not
recited in the rejected claim(s).” Ans. 4. However, this is exactly what
independent claim 36 requires. Claims 1, 20, and 26 call for the substantially
continuous wall to include at least one opening. Additionally, Chesbrough’s
hollow interior 108 is not “includ[ed]” in or by the walls along a length of
Chesbrough’s marker as required by independent claims 1, 20, or 26. Claims
1, 20, 26 and 36 each require both a hollow interior bounded by the walls
and that the walls include an opening or openings. The Examiner first
interprets Chesbrough’s hollow interior 108 as “bounded by” the walls to
meet the “hollow interior” limitation and then interprets that same structure
as “includ[ed]” in those walls to meet the “opening” limitation. Ans. 3,5. In
Appeal 2010-001674
Application 11/538,918
4
our view, “includes” means that the openings must be disposed in the wall
itself not simply bounded by or bordering it. Chesbrough’s hollow interior
108 does not serve to meet both limitations.
The Examiner also contends, essentially as an alternative to the
rationale discussed above, that the claimed subject matter would result from
modifying Chesbrough to include a biodegradable material as taught by
Fisher. Ans. 5. However, even if one were to modify Chesbrough according
to the teachings of Fisher we do not agree with the Examiner that such a
combination would produce the claimed subject matter. See Reply Br. 9. The
Examiner contends that “as the walls of Fisher begin to degrade, pores or
openings are formed which extend through the wall (claim 36) of the marker
as other portions of the wall of the marker remain intact. Thus leaving a
substantially continuous wall with at least one opening.” Ans. 4-5. We find
no discussion in Fisher indicating that Fisher’s markers would degrade in the
manner described by the Examiner. The Examiner’s finding appears to be
based purely upon speculation and conjecture which cannot form the basis of
a rejection under 35 U.S.C. § 103(a).
Accordingly, we are constrained to reverse the rejection of
independent claims 1, 20, 26 and 36 along with the rejection of claims 2-11,
14-17, 19, 21, 22, 24, and 27-33 which depend therefrom.

DECISION
For the above reasons, the Examiner’s rejection of claims 1-11, 14-17,
19-22, 24, 26-33 and 36 is reversed.

REVERSED
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