Ex parte McGregor et al.

Board of Patent Appeals and Interferences

Mar 30, 1998

08139251 (B.P.A.I. Mar. 30, 1998)

Application for patent filed October 20, 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(2) is not binding precedent of the Board.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. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte WALTER McGREGOR
and
SEMYON SHCHERVINSKY
_____________
Appeal No. 97-0111
Application 08/139,2511
______________
ON BRIEF
_______________
Before FRANKFORT, STAAB and McQUADE, Administrative Patent
Judges.
FRANKFORT, Administrative Patent Judge.
Appeal No. 97-0111
Application 08/139,251
While the examiner and appellants have referred to this2
reference as "Samuel," we note that the inventor's name is
"Samuel James Everett."
2
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 through 7. Claims 8 through 12, the only
other claims pending in the application, have been withdrawn from
further consideration under 37 CFR § 1.142(b).
Appellants' invention relates to a process for the
manufacture of suture needles. Claim 1 is representative of
subject matter on appeal and a copy of that claim may be found
in the Appendix to appellants' brief.
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Chisman 3,160,157 Dec. 8, 1964
McGregor et al. (McGregor) 4,660,559 Apr. 28, 1987
Everett 670,199 Apr. 16, 1952 2
(British Patent Specification)

Appeal No. 97-0111
Application 08/139,251
3
Claims 1 through 7 stand rejected under 35 U.S.C. § 103
as being unpatentable over Everett in view of Chisman and
McGregor. According to the examiner,
Samuel [sic, Everett] discloses a cold-
working method for manufacturing a surgical
needle. Chisman teaches particular lengths
may be cut from a blank material and the
desired geometrical shapes may be formed.
McGregor et al disclose a needle shaped
before treating it. See column 6, lines 50-
56. It would have been within the purview of
one having ordinary skill in the art at the
time of applicants’ invention to form Samuel
[sic] needle by first bending it then cold-
working treatment (final rejection, page 2).
Rather than reiterate the examiner's full explanation
of the above-noted rejection and the conflicting viewpoints
advanced by the examiner and appellants regarding the rejection,
we make reference to the final rejection (Paper No. 8, mailed
July 21, 1995) and the examiner's answer (Paper No. 11, mailed
March 19, 1996) for the examiner's reasoning in support of the
rejection, and to appellants' brief (Paper No. 10, filed
December 26, 1995) for appellants' arguments thereagainst.
Appeal No. 97-0111
Application 08/139,251
4
OPINION
In reaching our decision in this appeal, we have given
careful consideration to appellants' specification and claims, to
the applied prior art references, and to the respective positions
articulated by appellants and the examiner. As a consequence of
this review, we have made the determination that the examiner's
rejection under 35 U.S.C. § 103 will not be sustained. Our
reasons follow.
After careful review of the applied references, we must
agree with appellants that there is no teaching, suggestion or
incentive in the applied references which would have led one of
ordinary skill in the art to their combination so as to arrive at
the process for producing a suture needle as claimed by
appellants. All of the applied references disclose and teach
cold-working of the metal wire prior to bending the wire into its
curved suture needle configuration. See Everett page 2,
lines 37-63; Chisman column 3, line 56 -- column 4, line 37;
and McGregor column 6, lines 22-41.
Appeal No. 97-0111
Application 08/139,251
5
The examiner's reference to column 6, lines 50-56, of
McGregor is of no avail, since this portion of McGregor merely
indicates that the needle therein may be first shaped into its
curved configuration and then subjected to the laser hardening
treatment that constitutes the improvement in that patent. The
reference says nothing about cold-working of the suture needle
after bending, and, considered in its entirety, would appear to
teach or suggest that the needle be mechanically deformed to
produce the desired needle shape prior to any bending operation.
In our opinion, the present combination is based entirely on
impermissible hindsight derived from appellants' own teachings
and not from the prior art references themselves as the teachings
thereof would have been understood by one of ordinary skill in
the art at the time of appellants' invention.
Lacking any reasonable teachings in the prior art
itself which would appear to have fairly suggested the claimed
subject matter as a whole to a person of ordinary skill in the
art, or any viable line of reasoning as to why such artisan would
have otherwise found the claimed subject matter to have been
Appeal No. 97-0111
Application 08/139,251
6
obvious in light of the teachings of the applied references, we
must refuse to sustain the examiner's rejection of claims 1
through 7 under 35 U.S.C. § 103.
In light of the foregoing, the decision of the examiner
is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-0111
Application 08/139,251
7
Audley A. Ciamporcero, Jr.
One Johnson & Johnson Plaza
New Brunswick, NJ 08933-7003