Ex Parte FieldDownload PDFBoard of Patent Appeals and InterferencesAug 15, 201111538918 (B.P.A.I. Aug. 15, 2011) Copy Citation 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 nlk Copy with citationCopy as parenthetical citation