11004867 (B.P.A.I. Jan. 26, 2011)

Ex Parte Luukkainen

Board of Patent Appeals and InterferencesJan 26, 2011

11004867 (B.P.A.I. Jan. 26, 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. 11/004,867 12/07/2004 Tapani Luukkainen TUR-165 5798 32954 7590 01/26/2011 JAMES C. LYDON 100 DAINGERFIELD ROAD SUITE 100 ALEXANDRIA, VA 22314 EXAMINER NGUYEN, CAMTU TRAN ART UNIT PAPER NUMBER 3772 MAIL DATE DELIVERY MODE 01/26/2011 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 TAPANI LUUKKAINEN ____________________ Appeal 2010-009457 Application 11/004,867 Technology Center 3700 ____________________ Before JOHN C. KERINS, MICHAEL W. O’NEILL, and KEN B. BARRETT, Administrative Patent Judges. BARRETT, Administrative Patent Judge. DECISION ON APPEAL1 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2010-009457 Application 11/004,867 2 STATEMENT OF THE CASE Tapani Luukkainen (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s rejection of claims 7-12 under 35 U.S.C. § 103(a) as being unpatentable over Luukkainen (US 4,578,076, issued Mar. 25, 1986) and Hoff (US 3,935,860, issued Feb. 3, 1976). An oral hearing was held on January 19, 2011. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Claim 7, reproduced below, is representative of the subject matter on appeal. 7. A frame of an intrauterine system comprising an elongate member having at its first end a transverse member comprising a first wing and a second wing only, first ends of said wings being attached to said elongate member, wherein said first and second wings are symmetrically bent towards a second end of said elongate member so that an angle α formed between a longitudinal axis of said elongate member and said first or second wings is 10°-60° and wherein the second ends of the wings are symmetrically bent towards the elongate member by an angle β of 40°-140°. OPINION Appellant’s claim 7 recites an angle α between the longitudinal axis of the elongate member and a wing, and calls for that angle α to be within the range of 10°-60°. The Examiner found that Luukkainen discloses the claimed invention except for an angle α within the recited range. Ans. 3. The Examiner further found that Hoff discloses in Figures 2 and 4 an angle between the Appeal 2010-009457 Application 11/004,867 3 vertical and transverse members that “appears to be 45°.” Id. at 4. The Examiner then concluded that it would have been obvious to modify Luukkainen’s arms so as to have an angle of 45° “as taught by Hoff.” Id. Appellant argues that Hoff’s “actual angle” appears to be about 61° or 62°, not 45°. App. Br. 11. Appellant also argues that, in any event, the Hoff drawings cannot be relied upon by the Examiner as showing the specific angle because there is no indication that the drawings are drawn to scale. Reply Br. 2-3 (citing Hockerson-Halberstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951 (Fed. Cir. 2000). The Examiner, also citing Hockerson- Halberstadt, agrees that “the Hoff reference does not disclose that the drawings are to scale and is silent as to dimensions,” and asserts that Appellant’s “actual angle” is therefore of little value. Ans. 4-5. Nonetheless, the Examiner measured those Hoff figures using a protractor and found that the angle is 57° or 58°, while still maintaining that “the Hoff reference clearly shows the angle α of 45°”. Id. In light of the above, we cannot find that Hoff’s drawings reasonably disclose an angle within the range of 10°-60°. We also determine that the Examiner erred in finding that Hoff discloses an angle α of 45°. This erroneous finding underlies the Examiner’s conclusion of obviousness. Ans. 3. Accordingly, we are constrained to reverse the rejection of independent claim 7 and of claims 8-12 which depend therefrom. DECISION The decision of the Examiner to reject claims 7-12 is reversed. REVERSED Appeal 2010-009457 Application 11/004,867 4 mls JAMES C. LYDON 100 DAINGERFIELD ROAD SUITE 100 ALEXANDRIA, VA 22314