Ex Parte Liprie

Board of Patent Appeals and Interferences

Dec 19, 2002

09325944 (B.P.A.I. Dec. 19, 2002)

The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
Paper No. 21
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte SAMUEL F. LIPRIE
____________
Appeal No. 2002-0933
Application No. 09/325,944
____________
ON BRIEF
____________
Before ABRAMS, FRANKFORT, and MCQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 15. Claims 16 through 21, the only
other claims in the application, have been withdrawn from further
Appeal No. 2002-0933
Application No. 09/325,944
cancer or other diseases, and more particularly to a treatment
catheter or transport tube (24) having a specially designed
connector hub (26) allowing a radioactive source or sources to be
maneuvered from an afterloader in a non-sterile environment into
a sterile environment associated with the patient without the
occurrence of contamination. In addition, it is noted
(specification, page 12) that the specially designed connector
hub (26) and the socket portion of connector port (30) assure the
correct fit and connection of the treatment lumen to the
afterloader device and also directly communicate with the
afterloader device after the connector hub is locked in place to
insure that the connection between the treatment catheter and the
afterloader is complete. More particularly, pages 16 and 17 of
the specification indicate that when one or both of sensors (46)
or (48) associated with switches (50, 52) are depressed and the
transport tube (24) is firmly locked to the afterloader, a signal
is sent to the controller electronics of the afterloader through
wiring (54) to thereby allow movement of a drive member through
Appeal No. 2002-0933
Application No. 09/325,944
representative of the subject matter on appeal and a copy of
those claims can be found appended to appellant's brief.
The references of record relied upon by the examiner in
rejecting the appealed claims are:
Rague et al. (Rague) 4,851,694 Jul. 25, 1989
Fischell et al. 5,605,530 Feb. 25, 1997
(Fischell)

Claims 1 through 15 stand rejected under 35 U.S.C. § 112,
second paragraph as being indefinite for failing to particularly
point out and distinctly claim that which appellant regards as
the invention.
Claims 1 through 15 also stand rejected under 35 U.S.C.
§ 112, first paragraph, as containing subject matter which was
not described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor, at
the time the application was filed, had possession of the claimed
Appeal No. 2002-0933
Application No. 09/325,944
Claims 1 through 7, 9, 14 and 15 stand rejected under
35 U.S.C. § 102(b) as being anticipated by Rague.
Claim 8 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Rague as applied to claim 1 above, and further
in view of Fischell.
Claims 10 through 13 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Rague.
Rather than reiterate the examiner's full commentary with
regard to the above-noted rejections and the conflicting
viewpoints advanced by the examiner and appellant regarding those
rejections, we make reference to the Final rejection (Paper No.
10, mailed January 16, 2001) and to the examiner's answer (Paper
No. 15, mailed November 5, 2001) for the examiner's reasoning in
support of the rejections, and to appellant's brief (Paper No.
14, filed August 16, 2001) and reply brief (Paper No. 16, filed
Appeal No. 2002-0933
Application No. 09/325,944
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellant's specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellant and the examiner. As a consequence of1
our review, we have made the determinations which follow.
As a preliminary matter, we note that issues (1) and (2)
presented by appellant on page 5 of the brief relate to
objections made by the examiner during the prosecution of the
present application. The first is an objection to the drawings
under 37 CFR § 1.83(a) and the second is an objection to the
specification under 37 CFR § 1.75(d)(1). However, those
particular issues relate to petitionable subject matter under
37 CFR § 1.181 and are not appealable. Under 35 U.S.C. § 134 and
37 CFR § 1.191 appeals may be taken from the decision of the
primary examiner to reject claims. This Board does not and is
Appeal No. 2002-0933
Application No. 09/325,944
Examining Corps. See, for example, In re Hengehold, 440 F.2d
1395, 1403, 169 USPQ 473, 479 (CCPA 1971) and In re Mindick,
371 F.2d 892, 894, 152 USPQ 566, 568 (CCPA 1967). Accordingly,
we make no further comment regarding the objections made by the
examiner.
We turn now to the examiner's rejection of claims 1 through
15 under 35 U.S.C. § 112, second paragraph, noting that the
examiner has urged that the phrase "operatively associated with"
in claims 1 and 9 on appeal is unclear and does not provide a
positive structural relationship between the first end of the
conduit and the output end of the drive member, thereby rendering
independent claims 1 and 9, and the claims which depend
therefrom, indefinite. On page 9 of the brief, appellant argues
that the language of claims 1 and 9 is entirely clear,
particularly when understood in the context of the
specification's description of a known remote afterloader and
deployment of the flexible drive member thereof through the
Appeal No. 2002-0933
Application No. 09/325,944
We have reviewed the specification and drawings of the
present application (particularly pages 1, 2 and 14-18 of the
specification) and, based on that review, share appellant's
opinion that one of ordinary skill in the art would find the
language of claims 1 and 9 clear and definite. Accordingly, we
will not sustain the rejection of claims 1 through 15 under
35 U.S.C. § 112, second paragraph.
The examiner's rejection of claims 1 through 15 under
35 U.S.C. § 112, first paragraph as being based on a
specification that, as originally filed, fails to provide written
descriptive support for the invention claimed, is premised on the
examiner's view that the specification does not adequately
describe the conduit of the afterloader in relation to the drive
member thereof. Again, we share appellant's view that a review
of the specification of the present application, particularly
pages 1, 2 and 14 through 18, would provide one of ordinary skill
in the art with a reasonably clear understanding of the
Appeal No. 2002-0933
Application No. 09/325,944
over which appellant's invention is an improvement. Note, for
example, the afterloader (26) of Rague, which includes a flexible
drive member (40) carrying radiation sources (28) at its output
end and a conduit (42) through which the flexible drive member is
driven so as to allow the radiation sources (28) to pass from the
afterloader into the transport tube (22) and subsequently into
the applicator (14) for proper placement within a patient. It is
clear from appellant's disclosure, and that of Rague, that the
output end of the flexible drive member carrying the radiation
sources, when in its stowed position within the afterloader, will
be housed in a shielding safe similar to that seen in Rague at
(46) located at a first end of the afterloader conduit, and that
the first end of the conduit is, in this manner, "operatively
associated with" the output portion of the drive member.
Since we are convinced that the disclosure as originally
filed would have clearly conveyed to those skilled in the art
that appellant had invented the subject matter claimed, the
Appeal No. 2002-0933
Application No. 09/325,944
In this instance, we note however that the examiner has2
correctly observed that 37 CFR § 1.75(d)(1) mandates that the
claims must conform to the invention as set forth in the
remainder of the specification and that the terms and phrases
used in the claims must find clear support or antecedent basis in
the description so that the meaning of the terms in the claims
may be ascertained by reference to the description. While
§ 112, first paragraph, for failing to comply with the written
description requirement will not be sustained.2
We next look to the examiner's rejection of claims 1 through
7, 9, 14 and 15 under 35 U.S.C. § 102(b) as being anticipated by
Rague. On page 9 of the brief, appellant has indicated with
regard to independent claim 1 on appeal that Rague does not teach
the locking member set forth in the claim. According to the
examiner, Rague shows a locking member (37).
Our review of the Rague patent, particularly Figures 4 and
5, and the specification thereof beginning at column 6, line 46,
et seq., reveals that member (37) of connector (34) on transport
Appeal No. 2002-0933
Application No. 09/325,944
tube (22) is a "male plug" having a projecting portion which is
received in and accommodated by an opening in a female plug
socket (41) of connector (36) provided on the wall of the housing
of the afterloader (26). As urged by appellant, Rague does not
at any point in the specification indicate that the male plug
(37) and female socket provide a locking function or act as a
locking member. We see no reason to assume that they do.
As indicated on page 18 of appellant's specification, and as
shown in Figures 5 and 6, the locking device of the present
application includes a sliding plate (58) fitting into horizontal
guiding channels (44) located adjacent to the exit port of the
afterloader. The sliding plate has an opening large enough to
allow the tubing section of the transport tube (24) to pass, but
not the hub (26) of the tube, thereby allowing the transport tube
to be locked firmly to the afterloader after hub (26) has been
connected to and substantially completely mated within connector
port (30). There is nothing in Rague that corresponds to the
Appeal No. 2002-0933
Application No. 09/325,944
principles of inherency, each and every element or limitation of
a claimed invention. See In re Schreiber, 128 F.3d 1473, 1477,
44 USPQ2d 1429, 1431 (Fed. Cir. 1997) and RCA Corp. v. Applied
Digital Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385,
388 (Fed. Cir. 1984). Since Rague clearly does not disclose each
and every element of the system defined in appellant's claim 1 on
appeal, it follows that we will not sustain the examiner's
rejection of that claim under 35 U.S.C. § 102(b) as being
anticipated by Rague.
Claims 2 through 7 depend either directly or indirectly from
claim 1 and thus include all the limitations thereof. Therefore,
the examiner's rejection of dependent claims 2 through 7 under
35 U.S.C. § 102(b) as being anticipated by Rague is also not
sustained.
Regarding the rejection of claims 9, 14 and 15 under
35 U.S.C. § 102(b) as being anticipated by Rague, the examiner
Appeal No. 2002-0933
Application No. 09/325,944
answer. Appellant urges that Rague (col. 6, lines 56-59) merely
indicates that elements (78) and (80) are connected together to
assure a continuous electrical supply to the unit, and thus those
elements in the Rague patent do not constitute a "presence
sensing mechanism" which provides an indication of connection
upon substantially complete mating of the first and second mating
surfaces, as required in independent claim 9 and its dependent
claims. In appellant's view, Rague merely emphasizes a
continuous supply of electrical power without qualification as to
whether the connector is substantially completely mated.
We agree with appellant that elements (78) and (80) of Rague
appear to be designed to provide a supply of electrical power to
the unit without regard to whether the first and second mating
surfaces of the connectors (34, 36) or (37, 41) are substantially
completely mated or not. Claim 9 specifies that "upon
substantially complete mating of the first and second mating
surfaces, the presence sensing mechanism provides an indication
Appeal No. 2002-0933
Application No. 09/325,944
to allow one or more of the radioactive sources (19) to pass into
the transport tube and subsequently into the patient via catheter
(10), but only after the transport tube (24) is positively
affixed to the connector port (30), i.e., the hub (26) of
transport tube (24) is substantially completely mated with and
locked firmly in the connector port (30). No such indication or
signal is provided in Rague, and the elements (78) and (80) of
Rague have no such capability. Thus, the examiner's rejection of
claim 9, and dependent claims 14 and 15, under 35 U.S.C. § 102(b)
as being anticipated by Rague will not be sustained.
The next rejection for our review is that of claim 8 under
35 U.S.C. § 103(a) as being unpatentable over Rague in view of
Fischell. According to the examiner, it would have been obvious
to one of ordinary skill in the art to provide a tube in Rague,
presumably tube (38), with a tapered opening as illustrated in
Figure 4A of Fischell. Claim 8 is dependent from claim 1, and
appellant points out (brief, page 11) that Fischell does not
Appeal No. 2002-0933
Application No. 09/325,944
relied upon by the examiner, it follows that we will not sustain
the examiner's rejection of dependent claim 8 under 35 U.S.C.
§ 103(a).
As for the examiner's rejection of claims 10 through 13
under 35 U.S.C. § 103(a) based on Rague alone, we find the
examiner's reasoning to be fraught with speculation and
conjecture, and to be based entirely on hindsight derived from
appellant's own disclosure. Moreover, as should be apparent from
our discussion supra, we share appellant's view that Rague has no
teaching or suggestion of a "presence sensing mechanism" which
provides an indication of a substantially complete mating of the
first and second mating surface, as required in independent claim
9, from which claims 10 through 13 either directly or indirectly
depend. Thus, we will not sustain the examiner's rejection of
claims 10 through 13 under 35 U.S.C. § 103(a).
To summarize our decision, we note that a) the examiner's
Appeal No. 2002-0933
Application No. 09/325,944
through 7, 9, 14 and 15 under 35 U.S.C. § 102(b) based on Rague
has not been sustained; d) the rejection of claim 8 under
35 U.S.C. § 103(a) as being unpatentable over Rague and Fischell
has not been sustained; and e) the rejection of claims 10 through
13 under 35 U.S.C. § 103(a) has not been sustained.
In light of the foregoing, the decision of the examiner is
REVERSED.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
CHARLES E. FRANKFORT ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
Appeal No. 2002-0933
Application No. 09/325,944
HERBERT M. BEDINGFIELD
55 GRIFFIN ROAD SOUTH
BLOOMFIELD, CT 06040