Ex Parte Murphy

Board of Patent Appeals and Interferences

Jun 15, 2009

10667909 (B.P.A.I. Jun. 15, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte RICHARD F. MURPHY
__________

Appeal 2009-002024
Application 10/667,909
Technology Center 3700
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Decided:1 June 16, 2009
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Before DONALD E. ADAMS, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a medical
device including a reinforcing member. The Examiner has rejected the

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-002024
Application 10/667,909

claims as anticipated and obvious. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.
STATEMENT OF THE CASE
The Specification discloses “reinforcing members for medical devices
having a modified surface” (Spec. 1: 6). One embodiment “includes treating
at least the portion of the surface of one or more structural elements used to
create the reinforcing member to provide increased surface area, or to
provide a roughened or textured surface on at least a portion of the finished
reinforcing member” (id. at 1: 22-26). The Specification discloses that the
modified surface can provide “better connection between the reinforcing
member and other components of the medical device” (Spec. 1: 19-28).
Claims 41-56 are on appeal.2 Claim 41 is representative and reads as
follows:
Claim 41: A medical device including a reinforcing member, the
medical device formed by the following process:
providing one or more metallic filaments adapted and configured to be
made into the reinforcing member for the medical device, the one or more
metallic filaments including a metallic surface having a portion with an
initial surface area;
treating at least the portion of the surface of the one or more metallic
filaments to provide a final surface area that is greater than the initial surface
area;
creating the reinforcing member using the one or more metallic
filaments; and incorporating the reinforcing member into the construction of
the medical device.

2 Claims 1-40 are also pending but have been withdrawn from
consideration by the Examiner (Office action mailed May 18, 2007, page 1).
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Appeal 2009-002024
Application 10/667,909

The claims stand rejected as follows:
• claim 41 under 35 U.S.C. § 102(b) as being anticipated by Cohen;3
and
• claims 41-56 under 35 U.S.C. § 103(a) as being obvious in view of
Cohen and Parisi.4
ANTICIPATION
Issue
The Examiner has rejected claim 41 under 35 U.S.C. § 102(b) as
being anticipated by Cohen. The Examiner finds that Cohen discloses
making a medical device that includes a reinforcing member comprising
filaments by “treating at least the portion of the surface [of the filaments] …
to provide a final surface area that is greater than the initial surface area, and
creating the reinforcing member using the one or more metallic filaments
and incorporating the member into a medical device” (Answer 3).
Appellant contends that the Examiner erred in finding Cohen to
disclose the claim limitation of “treating at least the portion of the surface of
the one or more metallic filaments to provide a final surface area that is
greater than the initial surface area” (claim 41) because “Cohen does not
teach an etching process that necessarily and inherently results in an
increased surface area” (Appeal Br. 7).
The issue with respect to this rejection is: Has Appellant demonstrated
that the Examiner erred in finding that Cohen discloses a medical device that
is the product of treating at least a “portion of the surface of the one or more

3 Cohen, US 5,330,521, Jul. 19, 1994.
4 Parisi et al., US 2001/0027310 A1, Oct. 4, 2001.
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Appeal 2009-002024
Application 10/667,909

metallic filaments to provide a final surface area that is greater than the
initial surface area,” as recited in claim 41?
Findings of Fact
1. Cohen discloses “an implantable electrical lead” (Cohen, col. 3, ll.
16-17).
2. Cohen discloses that the “lead comprises a wire core formed into a
helical coil … ; a layer of an electrically conductive material … ; [and] a
biocompatible, electrically insulating sheath covering the helical coil” (id. at
col. 3, ll. 17-25).
3. Cohen discloses the following:
Any electrically insulating oxides or films that may be present
on the surface of the wire core 22 must be substantially
removed before forming the electrically conductive layer 24 on
the wire core 22 in order to provide good electrical continuity
between the wire core and the electrically conductive layer 24.
An example of one technique for removing such oxides or films
from the surface of the wire core 22 involves etching the wire
core with an acid in an inert atmosphere, such as argon or
nitrogen, before forming the conductive material thereon. The
removal of such films and oxides also promotes mechanical
adhesion between the conductive layer 24 and the surface of the
wire core 22.
(Id. at col. 6, ll. 52-65.)
4. Cohen discloses that “the lead 40 may be constructed, as shown by
way of example in FIG. 4, whereby the wire core 42 has a relatively large
diameter for the proximal 2/3 of the overall length, ‘L’, of the lead and a
smaller diameter for the distal 1/3 of the length of the lead” (id. at col. 9, ll.
18-23).

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Application 10/667,909

5. Figure 4 of Cohen is shown below:

Figure 4 shows “a cross-sectional view of an electrical lead having a wire
core with a varying cross-sectional area” (id. at col. 4, ll. 16-17).
6. Cohen discloses that a
wire core having a varied diameter … may be manufactured,
for example, by feeding a wire of uniform diameter through an
etchant, such as an aqua regia, at varying speed. A length of
wire having a smaller diameter may be manufactured by
feeding the wire through the etchant at relatively slow speed so
that the wire core is exposed to the etchant a sufficient time for
the etchant to chemically etch the wire core to a predetermined
diameter. The length of wire having the cross-sectional area
which tapers from the smaller diameter to the larger diameter
may be obtained by gradually increasing the speed of the wire
through the etchant, thereby producing a wire core having a
tapered diameter with no discontinuities.
(Id. at col. 9, ll. 29-42.)
Principles of Law
[E]ven though product-by-process claims are limited by and
defined by the process, determination of patentability is based
on the product itself.

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Application 10/667,909

The patentability of a product does not depend on its method of
production. If the product in a product-by-process claim is the
same as or obvious from a product of the prior art, the claim is
unpatentable even though the prior product was made by a
different process.
In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).
Analysis
Claim 41 is directed to a medical device including a reinforcing
member made from a metallic filament, at least a portion of the filament’s
surface having been treated to provide a final surface area that is greater than
the initial surface area.
Appellant does not dispute that Cohen discloses a medical device
having a reinforcing member made of a metallic filament. However,
Appellant contends that the metallic filaments in Cohen’s device do not have
a surface portion that is treated to provide a final surface area that is greater
than the initial surface area of the treated portion.
The Examiner reasons that the claim only “necessitate[s] a surface
that is not completely smooth, not specifically whether this surface is
achieved by increasing the surface area of the reinforced metallic member or
decreasing the surface area of the reinforced metallic member since there is
no structural difference in the resultant product” (Answer 6). The Examiner
finds that Cohen’s product would have the required structure because it “is
etched by an acid chemical etching process … [that] operates by molecular
‘pitting’ i.e. removed pieces of material from the surface of the material”
(Ans. 6). The Examiner notes that “Applicant’s own specification …
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Application 10/667,909

discloses surface treatments of which one can be a chemical etching
process” (id.).
Appellant contends that “Cohen does not teach an etching process that
necessarily and inherently results in an increased surface area” (Appeal Br.
7) and thus contends that Cohen does not disclose the claim limitation of
“treating at least the portion of the surface of the one or more metallic
filaments to provide a final surface area that is greater than the initial surface
area” (id.).
Appellant’s arguments are not persuasive. Claim 41 recites a product
that results from treating a “portion of the surface of the one or more
metallic filaments to provide a final surface area that is greater than the
initial surface area.” Cohen discloses a wire (i.e., a metallic filament) that is
etched with acid by drawing the wire through the acid at gradually
increasing speeds to produce a wire with a tapered diameter (i.e., smaller
diameter resulting from long exposure to acid tapering to larger diameter
resulting from short exposure to acid).
Based on the process described by Cohen, it is reasonable to conclude
that, toward the end of the etching process, a portion of the wire will be
exposed to the acid etchant for a period of time that will result in that portion
of wire having a surface that is pitted but not smaller overall in diameter, and
thus will have a surface area that is greater than the initial surface area.
Further, as recognized by the Examiner, the structure implied by the claimed
process step is a metallic filament with a roughened surface and for the
reasons discussed above Cohen provides a reasonable basis on which to
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Appeal 2009-002024
Application 10/667,909

conclude that the disclosed metallic filament would have a roughened
surface.
Conclusions of Law
Appellant has not demonstrated that the Examiner erred in finding that
Cohen discloses a medical device that is the product of treating at least a
“portion of the surface of the one or more metallic filaments to provide a
final surface area that is greater than the initial surface area,” as recited in
claim 41.
OBVIOUSNESS
The Examiner has rejected claims 41-56 under 35 U.S.C. § 103(a) as
being obvious in view of Cohen and Parisi (Answer 4-5).
Appellant relies on the same argument with respect to this rejection as
he relied on with respect to the rejection of claim 41 for anticipation (Appeal
Br. 9). For the reasons discussed above, Appellant’s argument is not
persuasive. We affirm the rejection of claim 41 as obvious in view of Cohen
and Parisi. Anticipation is the epitome of obviousness. See, e.g., In re
Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Claims 42-56 fall with claim
41 because they were not argued separately. 37 C.F.R. § 41.37(c)(1)(vii).
SUMMARY
We affirm the rejection of claim 41 under 35 U.S.C. § 102(b) as being
anticipated by Cohen. We also affirm the rejection of claims 41-56 under 35
U.S.C. § 103(a) as being obvious in view of Cohen and Parisi.
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Appeal 2009-002024
Application 10/667,909

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

cdc

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