Ex Parte Hall et al

Board of Patent Appeals and Interferences

Apr 29, 2011

08130634 (B.P.A.I. Apr. 29, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
08/130,634 10/01/1993 JOHN P. HALL BAXTR-143BC 4363
33197 7590 04/29/2011
STOUT, UXA, BUYAN & MULLINS LLP
4 VENTURE, SUITE 300
IRVINE, CA 92618
EXAMINER
ZALUKAEVA, TATYANA
ART UNIT PAPER NUMBER
3761
MAIL DATE DELIVERY MODE
04/29/2011 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN P. HALL and RONALD B. BECKMAN
____________

Appeal 2010-006334
Application 08/130,634
Technology Center 3700
____________

Before MURRIEL E. CRAWFORD, JENNIFER D. BAHR, and JOSEPH A.
FISCHETTI, Administrative Patent Judges.

CRAWFORD, Administrative Patent Judge.

DECISION ON APPEAL
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Application 08/130,634

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STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final decision rejecting claims 83 to 103. We have jurisdiction over the
appeal under 35 U.S.C. § 6(b).

BACKGROUND
Appellants’ invention is directed to an intracranial pressure
monitoring catheter device (Spec. 1).
Claim 83 is illustrative:
83. An intracranial pressure monitoring catheter
device which is insertable into the cranium of a
mammal through a bore hole of the cranium
comprising:
an elongate, tubular flexible catheter body
having a proximal end, a distal end, and an outer
sidewall;
a pressure transmitting component for
receiving the pressure at the distal end of said
catheter body and for transmitting an indication of
said pressure through said catheter body to the
proximal end thereof;
a connector on the proximal end of said
catheter body for connecting said pressure
transmitting component to an extracorporeal
pressure monitoring device;
a stylet insertion aperture formed in the side
wall of the catheter body near the distal 'end of the
catheter body, a distal portion of the catheter body
being thus defined between the stylet insertion
aperture and the catheter body distal end; and
a stylet lumen extending between the stylet
insertion aperture and the distal end of the catheter
body, the stylet lumen being closed at the distal
end of the catheter body;

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said catheter device being thereby configured such
that a rigid stylet may be inserted through said
stylet insertion aperture and advanced in the distal
direction through said stylet receiving lumen to the
closed distal end thereof to impart stiffness to only
the distal portion of the catheter body, the catheter
device being adapted to be fed through a scalp
tunnel formed between two scalp incisions, one of
the scalp incisions being coincident with the bore
hole in the cranium, the catheter body being sized
so that it may extend through the scalp tunnel with
the proximal and distal ends of the catheter body
extending out of respective ones of said scalp
incisions, the distal portion being sized so that it
can be pulled up and away from the bore hole and
the stylet inserted into the stylet insertion aperture
to impart stiffness to the distal portion and thereby
facilitate insertion through the bore hole.

Appellants appeal the following rejections:
Claims 83 to 88, 91, 93 to 99 and 103 under the judicially created
doctrine of obviousness-type double patenting as being unpatentable over
claims 1 to 4 of Hall (US Pat. No. 6,210,346 B1, iss. Apr. 3, 2001).
Claims 89, 90,100, and 101 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1 to 4
of Hall in view of Sussman (US Pat. No. 4,578,057, iss. Mar. 25, 1986) and
Wilson (US Pat. No. 4,632,668, iss. Dec. 30, 1986).
Claims 92 and 102 under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claims 1 to 4
of Hall in view of Millar (US Pat. No. 5,117,836, iss. Jun. 2, 1992).
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ANALYSIS
Consonance
We direct attention first to the issue of whether the Examiner erred in
rejecting the claims under the judicially created doctrine of double patenting
because the claim are protected by the safe harbor provision of 35 U.S.C. §
121.

Findings of Facts
The present application was filed on October 1, 1993 as a continuation
of Serial No. 07/622,250 (hereinafter “250 application”) which was filed on
December 4, 1990. The 250 application was filed on December 4, 1990 as a
continuation-in-part of Serial No. 07/419,938, which was filed on October
11, 1989.
The Examiner entered a restriction requirement in the 250 application
on May 22, 1992 (hereinafter “Paper No. 3”). In the paper, the Examiner
restricted the application as follows:
I. Claims 1-19, drawn to an Integral Pressure
Sensor and Fluid Transport Catheter....
II. Claims 21-28, drawn to An Optical Pressure
Sensing Catheter....
III. Claims 29-32, are drawn to A Catheter for
Measuring Fluid Pressure....
IV. Claims 36-37, drawn to a method of
inserting a catheter…

In Paper No. 3, the Examiner stated that Groups IV and I, II or III are
related as product and process of use. With reference to the Manual of
Patent Examining Procedure (MPEP) § 806.05(h), the Examiner stated that
inventions in this relationship are distinct if it can be shown that (1) the
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process for using the product as claimed can be practiced with another
materially different product or (2) the product as claimed can be used in a
materially different process of using that product. The Examiner stated:
“[i]n the instant case the process for using the product as claimed can be
practiced with another materially different product such as a non-sensing,
drug delivery catheter for insertion into any portion of the body.” The
Appellants elected to prosecute the claims of Group III which were directed
to a catheter and later filed a continuation application which is the instant
application.
The non elected claims of Group IV were directed to a method of
inserting a catheter into a patient’s body. These claims did not include
recitations related to the structure of a catheter. On November 7, 1997, the
Appellants filed a divisional application for the Group IV claims (hereinafter
“the 435 application”) along with a preliminary amendment which cancelled
claims of the divisional application and substituted claims that included
recitations to the structure of a specific catheter. This application matured
into US Patent No. 6,210,345 B1 issued to Hall.

Principles of Law
Section 121 of 35 U.S.C. provides:
A patent issuing on an application with respect to
which a requirement for restriction under this
section has been made, or on an application filed
as a result of such a requirement, shall not be used
as a reference either in the Patent and Trademark
Office or in the courts against a divisional
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application or against the original application or
any patent issued on either of them, if the
divisional application is filed before the issuance
of the patent on the other application.

As such, 35 U.S.C. § 121 creates a safe harbor that protects an applicant
from losing rights when an application is divided. In order to receive the
safe harbor protection the non-elected claims must be consonant with the
restriction requirement. Consonance requires that the line of demarcation
between the independent and distinct inventions that prompted the restriction
requirement must be maintained. Gerber Garment Tech., Inc. v. Lectra Sys,
Inc., 916 F.2d 683, 688 (Fed. Cir. 1990). The restriction requirement must
set forth clearly the line of demarcation. Geneva Pharm, Inc. v. GlaxoSmith
PLC, 349 F.3d 1373, 1381 (Fed. Cir. 2003).

Analysis
The Appellants and the Examiner disagree about what line of
demarcation was established by the restriction requirement in this
application. The Appellants argue that the line of demarcation established
by the restriction requirement was between product claims and process
claims. We agree with the Examiner that the line of demarcation, as clearly
set out in the restriction requirement, was between claims to a catheter and
claims directed to a process of using any catheter. Claims 1 to 4 of Hall
recite a method of using a specific catheter. The features of this catheter are
clearly recited in claims 1 to 4. Therefore, the line of demarcation has been
crossed and as such the safe harbor offered by 35 U.S.C. § 121 does not
apply in this case. The Appellants are correct that consonance can be
maintained despite claim amendments; however, the claim amendments
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must not cross the line of demarcation set out in the Examiner’s restriction
requirement. In the instant case we have determined that the amendment to
the non-elected claims that were the subject of the divisional application that
matured into the Hall patent did cross the line of demarcation.

Obviousness
Principles of Law
The key question in any obviousness double patenting analysis is:
“Does any claim in the application define merely an obvious variation of an
invention claimed in the patent asserted as supporting double patenting?”
General Foods Corp. v. Studiengesellschaft Kohle mbH, 972 F.2d 1272,
1278 (Fed. Cir. 1992) (discussing In re Vogel, 422 F.2d 438 (CCPA 1970)).
As stated by our reviewing court in In re Braat, 937 F.2d 589, 592-93 (Fed.
Cir. 1991) (citation omitted):
Obviousness-type double patenting is a judicially created doctrine
intended to prevent improper timewise extension of the patent right by
prohibiting the issuance of claims in a second patent which are not
“patentably distinct” from the claims of a first patent. An analysis analogous
to an obviousness analysis under 35 U.S.C. § 103(a) comes into play during
the step of determining the obviousness of the “difference” between the
claimed invention and the patented invention. See Studiengesellschaft Kohle
mbH v. N. Petrochemical Co., 784 F.2d 351, 355 (Fed. Cir. 1986); In re
Longi, 759 F.2d 887, 892-93 (Fed. Cir. 1985). The disclosure of a patent
cited in support of a double patenting rejection cannot be used as though it
were prior art, even where the disclosure is found in the claims. Braat, 937
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F.2d at 594 n.5. “It is the claims, not the specification, that define an
invention.… And it is the claims that are compared when assessing double
patenting.” Ortho Pharm. Corp. v. Smith, 959 F.2d 936, 943 (Fed. Cir.
1992).

Claims 83 to 88, 91 and 93 to 99
Claim 83 is rejected under the doctrine of double patenting over claim
1 of the Hall patent.
We are not persuaded of error on the part of the Examiner by
Appellant’s argument that claim 83 does not include drainage apertures and
a lumen that are recited in claim 1 of Hall. We agree with the Examiner that
omission of an element and its function would have been obvious if the
remaining elements perform the same function as in the prior art. Omission
of an element and its function is an obvious expedient where the function is
not desired. In re Kuhle, 526 F.2d 553, 555 (CCPA 1975). In addition, as
claim 83 is set out in comprising format, claim 83 does not preclude the
presence of other elements. In view of the foregoing, we will sustain the
Examiner’s rejection of claim 83. We will also sustain the rejection as it is
directed to claim 88 because the Appellants have not argued the separate
patentability of this claim.
We agree with the Appellants that the Examiner has failed to establish
that claims 91 and 94 would have been obvious over the claim 1 of Hall.
Claims 91 and 94 recite that the stylet is shorter than the catheter body. The
Examiner improperly relies on portions of the Hall disclosure to establish the

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obviousness of this subject matter. Therefore, we will not sustain the
rejection of claim 91 and claim 94 and claims 95 to 99 and 103 dependent
thereon.
The Examiner also relies on the Hall disclosure to establish that it
would have been obvious to include a stylet insertion aperture located
approximately 4 inches from the distal end of the catheter body. Therefore
we will not sustain the Examiner’s rejection of claims 84 and 85.

We are not persuaded of error by the Examiner by Appellants’
argument that claims 1 to 4 of Hall do not require an optical sensing system.
To the contrary, claim 4, which depends from claim 1 of Hall recites that the
pressure sensing component of the catheter of claim 1 includes a light-
reflective diaphragm, and the means for transmitting a signal of claim 1 is an
optical fiber and that the method further comprises attaching a light
source to the pressure monitoring connecter and attaching a photodetector to
the monitoring connector. As such, claim 4 clearly recites an optical sensing
system. Therefore, we will sustain the Examiner’s rejection of claims 86, 87
and 93.

Claims 89 to 90 and 100 to 101
The Examiner rejected these claims under the judicially created
doctrine of obvious-type double patenting as being unpatentable over claim
1 of Hall in view of Sussman and Wilson.
We are not persuaded of error on part of the Examiner by Appellants’
argument that a person of ordinary skill in the art would not have been
motivated to provide drainage apertures in a longitudinal row. Appellants
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first assert that because the row of apertures are not depicted in each of the
figures in Sussman and Wilson, a person of ordinary skill in the art would
not be motivated to place the apertures in a longitudinal row. The
Appellants also argue that the reasoning set forth by the Examiner is
illogical because the arrangement of apertures in longitudinal rows would do
nothing to achieve more reliable drainage. In our view, as Wilson and
Sussman depict various patterns for the placement of the plurality of
apertures, a person of ordinary skill in the art would have been taught to
employ any of the configurations including the configuration in which the
apertures are arranged in a longitudinal row to achieve the purpose of
providing more reliable drainage.
In view of the foregoing, we will sustain this rejection as it is directed
to claim 89. We will also sustain this rejection as it is directed to claim 90
because the Appellants have not argued the separate patentability of this
claim.
We will not sustain this rejection as it is directed to claims 100 to 101
because these claims are dependent on claim 94 and as such include the
recitation that the stylet is shorter than the catheter body. As we found
above, claim 1 of Hall does not recite this subject matter and the Examiner
has not established that this subject matter is disclosed in Sussman or
Wilson.

Claims 92 and 102
Claims 92 and 102 are rejected under the judicially created doctrine of
obviousness-type double patenting as being unpatentable over claim 1 of
Hall in view of Millar. The Appellants argue that Millar is not proper prior
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art and have filed two declarations to establish that the combination of
elements recited in claim 92 were invented by Appellants prior to the
October 22, 1990 filing of Millar. The Examiner has not addressed the
substance of this argument or the declarations submitted by the Appellants
but instead argues that the argument is unseasonably presented. We do not
agree with the Examiner that the Appellants’ argument is untimely nor have
we been directed to any legal authority to this effect by the Examiner. As
the Examiner has not responded to this argument that was timely made in the
Brief, we will not sustain the rejection of the Examiner of claim 92.
We will also not sustain this rejection as it is directed to claim 102 for
the same reasons and for the additional reason as detailed above that the
Examiner has failed to establish obviousness of a stylet shorter than the
catheter body as recited in claim 94 from which claim 102 depends.

DECISION
We AFFIRM the Examiner’s § 103(a) rejection of claims 83, and 86
to 90 and 93
We REVERSE the Examiner’s § 103(a) rejection of claims 84, 85, 91,
92, and 94 to 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1).

AFFIRMED-IN-PART

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