Ex parte LAUB

Board of Patent Appeals and Interferences

May 19, 1998

08123639 (B.P.A.I. May. 19, 1998)

Application for patent filed September 17, 1993.1
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publication in a law journal and (2) is not binding precedent of the Board.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. 11
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GLENN W. LAUB
_____________
Appeal No. 96-0877
Application 08/123,6391
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
ABRAMS and NASE, Administrative Patent Judges.
McCANDLISH, Senior Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s final
rejection of claims 1 through 9. No other claims are pending
in the application.
Appeal No. 96-0877
Application 08/123,639
2
Appellant’s claimed invention relates to an implantable
prosthetic heart valve assembly having a leaflet (12) and an
oscillator (13) (i.e., a vibratory device) for imparting
vibratory energy to the leaflet.
A copy of the appealed claims is appended to appellant’s
brief.
The following reference is relied upon by the examiner as
evidence of obviousness in support of his rejection under 35
U.S.C. § 103:
Carey et al. (Carey) 5,052,934 Oct. 1,
1991
The grounds of rejection are as follows:
1. Claims 1 through 9 stand rejected under the first
paragraph of 35 U.S.C. § 112.
Appeal No. 96-0877
Application 08/123,639
3
2. Claims 2, 3 and 9 stand rejected under the second
paragraph of 35 U.S.C. § 112 as being indefinite for failing
to particularly point out and distinctly claim the subject
matter which appellant regards as his invention.
3. Claims 1 through 9 stand rejected under 35 U.S.C. §
103 as being unpatentable over Carey.
Considering first the rejection under the first paragraph
of § 112, the examiner states that ?the specification, as
originally filed, does not provide support for the invention
as is now claimed? (final office action, Paper No. 4, page 2).
In addition, he states that ?[t]he specification also fails to
provide an adequate written description of the invention and
fails to adequately teach how to make and/or use the
invention? (final office action, Paper No. 4, page 2).
As we understand the examiner’s position as quoted supra
and as set forth in greater detail in the final office action
(Paper No. 4), he concludes that the appealed claims are based
Appeal No. 96-0877
Application 08/123,639
4
on a specification which does not satisfy both the description
and enablement requirements in the first paragraph of § 112.
However, because these requirement are separate and distinct
and involve different tests, they cannot be considered as a
common or single rejection as the examiner has done here. See
In re Wilder, 736 F.2d 1516, 1520, 222 USPQ 369, 372 (Fed.
Cir. 1984). We shall therefore treat this rejection as two
separate grounds of rejection of the appealed claims, one
under the description requirement in the first paragraph of §
112, and the other under the enablement requirement in the
first paragraph of § 112.
With apparent regard to the description requirement, the
examiner takes the position that ?[t]he specification does not
provide support for ‘an implantable prosthetic heart having at
least one leaflet and valve as claim 1 now states? (final
office action, Paper No. 4, page 2). Appellant does not take
issue with the examiner’s position and instead states on page
7 of the main brief that the present wording of claim 1
contains an error which occurred in rewriting the claim in
amended form in amendment A (Paper No. 3).
Appeal No. 96-0877
Application 08/123,639
5
We agree that there is no descriptive support in
appellant’s specification as filed for ?[a]n implantable
prosthetic heart? in its entirety. Instead, the specification
as filed merely discloses a prosthetic component for the
heart, namely a prosthetic heart valve. We will therefore
sustain the rejection of claim 1 and claims 2, 3, 8/1 and 9,
which depend from claim 1, based on the description
requirement in the first paragraph of
§ 112.
Unlike claim 1, claim 4, the only other independent claim
on appeal, does not call for a prosthetic heart as such and,
instead, is directed to the prosthetic heart valve itself. We
will therefore reverse the rejection of claims 4 through 7 and
8/4 based on the description requirement in the first
paragraph of § 112.
With regard to the enablement requirement in the first
paragraph of § 112, the test is whether an applicant’s
disclosure, considering the level of ordinary skill in the art
Appeal No. 96-0877
Application 08/123,639
6
as of the date of the applicant’s application, would have
enabled a person of such skill to make and use the claimed
invention without undue experimentation. In re Strahilevitz,
668 F.2d 1229, 1232, 212 USPQ 561, 563 (CCPA 1982).
In the present case, one of ordinary skill in the art
would have recognized that the vibrations produced by the
vibratory device 13 are transmitted through the valve housing
11 to the leaflet 12 itself. Furthermore, given the
specialized level of skill in this art, one of ordinary skill
in the art would have known how to attach or connect the
vibratory device 13 to the valve housing to impart the desired
vibrations to the leaflet without undue experimentation,
notwithstanding the lack of detail in appellant’s
specification. Accordingly, we cannot sustain the rejection of
claims 1 through 9 based on the enablement requirement in the
first paragraph of § 112.
With regard to the rejection of claims 2, 3 and 9 under
the second paragraph of § 112, appellant does not contend that
the examiner erred in holding that these claims are
Appeal No. 96-0877
Application 08/123,639
7
indefinite. Instead, on page 7 of the main brief, appellant
concedes the correctness of the examiner’s position that, in
substance, there is no antecedent basis in claim 1 for ?[a]n
implantable prosthetic heart valve? as recited in claims 2, 3
and 9. Accordingly, we will sustain the rejection of claims 2,
3 and 9 under the second paragraph of § 112.
With regard to the § 103 rejection, the examiner has made
the finding that the ultrasonic transducers 124 and 126 in
Carey’s device must impart vibratory energy to the prosthetic
heart valve member 120 because it lies in the path of the
ultrasonic vibrations traveling to the elastomeric measurement
windows 138 and 140. The only arguments traversing this
rejection are as follows:
There is no teaching or suggestion that
ultrasonic transducers 124 and 126 provide
vibratory energy to the heart valve 120 or
valve 108. To the contrary, ultrasonic
energy is generated to measure flow
characteristics of the blood-mimicking
fluid. There is no suggestion for
positioning transducers 124 or 126 on the
prosthetic valve housing or is in any way
Appeal No. 96-0877
Application 08/123,639
8
impart vibratory energy to the leaflets of
the valve. In short, Casey [sic, Carey], et
al. is simply not relevant or suggestive of
the present invention. [brief, pages 8-9]
Admittedly, Carey does not expressly teach that the
transducers 124 and 126 impart vibratory energy to the
prosthetic heart valve member 120. However, it is not
necessary that Carey explicitly disclose that the transducers
124 and 126 will impart vibratory energy to valve member 120.
Instead, it is sufficient that Carey’s transducers are
inherently capable of performing in the manner claimed. See In
re Hallman, 655 F.2d 212, 215, 210 USPQ 609, 611 (CCPA 1981),
In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA 1971)
and In re Yanush, 477 F.2d 958, 959, 177 USPQ 705, 706 (CCPA
1973).
In the present case, claim 1 does not require the valve
to actually be vibrated by the vibratory energy. Instead, this
claim merely requires that vibratory energy be applied to the
valve. In Carey’s apparatus, it is reasonable to believe that
the ultrasonic vibrations produced by transducers 124 and 126
Appeal No. 96-0877
Application 08/123,639
9
will necessarily and, thus, inherently be imparted to the
valve member 120 because the valve member lies in the path of
the ultrasonic vibrations traveling towards window 140. Since
appellant has not shown that Carey’s transducers are not
inherently capable of performing in the manner broadly claimed
in claim 1, we will sustain the § 103 rejection of claim 1. We
will also sustain the § 103 rejection of dependent claims 2,
3, 8/1 and 9 because the patentability of these claims has not
been argued separately of claim 1. See In re Nielson, 816 F.2d
1567, 1572, 2 USPQ2d 1525, 1528 (Fed. Cir. 1987) and In re
Burckel, 592 F.2d 1175, 1178-79, 201 USPQ 67, 70 (CCPA 1979).
Unlike claim 1, claim 4 requires the oscillator to
perform the function of oscillating (i.e., vibrating) the
leaflet. In Carey’s apparatus, there is no evidence to
indicate that the ultrasonic vibrations produced by
transducers 124 and 126 are of sufficient strength to
necessarily perform this function. As stated in In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981), inherency
may not be established by possibilities or probabilities.
Accordingly, we must reverse the § 103 rejection of claims 4
Appeal No. 96-0877
Application 08/123,639
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through 7 and 8/4.
In summary:
1. The rejection of claims 1, 2, 3, 8/1 and 9 based on
the description requirement in the first paragraph of § 112 is
affirmed.
2. The rejection of claims 4 through 7 and 8/4 based on
the description requirement in the first paragraph of § 112 is
reversed.
3. The rejection of claims 1 through 9 based on the
enablement requirement in the first paragraph of § 112 is
reversed.
4. The rejection of claims 2, 3 and 9 under the second
paragraph of § 112 is affirmed.
5. The rejection of claims 1, 2, 3, 8/1 and 9 under § 103
Appeal No. 96-0877
Application 08/123,639
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is affirmed.
6. The rejection of claims 4 through 7 and 8/4 under §
103 is reversed.
The examiner’s decision rejecting the appealed claims is
affirmed-in-part.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
)
HARRISON E. McCANDLISH, Senior)
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS )
Administrative Patent Judge ) APPEALS AND
)
Appeal No. 96-0877
Application 08/123,639
12
) INTERFERENCES
)
JEFFREY V. NASE )
Administrative Patent Judge )
Thomas C. Wettach
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