Ex parte Reger

Board of Patent Appeals and Interferences

May 23, 2000

08698982 (B.P.A.I. May. 23, 2000)

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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journal and (2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte VINCENT A. REGER
________________
Appeal No. 1998-1552
Application 08/698,982
________________
HEARD: MAY 4, 2000
________________
Before ABRAMS, FRANKFORT and NASE, Administrative Patent
Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the decision of the examiner
finally rejecting claims 23-31, which at that point
constituted all of the claims remaining of record in the
application. Subsequently, claim 23 was canceled, and claims
24-27 and 29-31 were amended. However, no claims were allowed
Appeal No. 1998-1552
Application 08/698,982
Rejections of claims 24-31 under 35 U.S.C. § 112, first1
and second paragraphs, were withdrawn in the Examiner’s
Answer.
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and claims 24-31 are before us on appeal.
The appellant’s invention is directed to a method of
enlarging a lumen of an artery that is affected by an
atheroma. The claims on appeal have been reproduced in an
appendix to the Brief.
THE REFERENCES
The references relied upon by the examiner to support the
final rejection are:
Fischell et al. (Fischell) 4,886,061 Dec. 12,
1989
(filed Feb. 9, 1988)
Reiss 4,966,604 Oct. 30,
1990
(filed Jan. 23, 1989)
THE REJECTIONS1
Claims 24-27 and 29-31 stand rejected under 35 U.S.C. §
103 as being unpatentable over Reiss.
Claim 28 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Reiss in view of Fischell.
Appeal No. 1998-1552
Application 08/698,982
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Rather than attempt to reiterate the examiner’s full
commentary with regard to the above-noted rejections and the
conflicting viewpoints advanced by the examiner and the
appellant regarding the rejections, we make reference to the
Examiner’s Answer (Paper No. 17) and the Appellant’s Brief
(Paper No. 15).
OPINION
Both rejections are under 35 U.S.C. § 103. The test for
obviousness is what the combined teachings of the prior art
would have suggested to one of ordinary skill in the art.
See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a
reason why one of ordinary skill in the art would have been
led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte
Clapp, 227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this
end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from
the knowledge generally available to one of ordinary skill in
Appeal No. 1998-1552
Application 08/698,982
In keeping with the explanation provided in the2
specification, we interpret “radial size of the artery” to
mean the diameter of the artery unconstricted by the plaque.
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the art and not from the appellant's disclosure. See, for
example, Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044,
1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S.
825 (1988).
The claimed invention deals with the problem of the
atherosclerotic narrowing of arteries. According to the
appellant, the prior art methods of removing atherosclerotic
plaque by means of basket knives carried by catheters are
improved upon by his method, in which a radial adjustable
cutting head is operated beyond the unconstricted diameter of
the artery so that it not only removes the plaque from the
lumen of the artery, but also removes some of the wall of the
artery. This limitation is expressed in independent claim 24
as the steps of “enlarging the radial size of the cutting head
beyond that of radial size of the artery” and “displacing the2
enlarged cutting head to engage and axially cut both wall
tissue and plaque from the artery.” Independent claims 29, 30
and 31 recite similar limitations.
Appeal No. 1998-1552
Application 08/698,982
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Claims 24-27 and 29-31 stand rejected as being
unpatentable over Reiss, which is directed to an atherectomy
cutter. It is the examiner’s position that “[t]he radial size
of the Reiss cutting head is obviously enlarged beyond that of
the radial size of the artery in view of the close sliding fit
therebetween,” from which he concludes that “[s]ome wall
tissue is obviously cut during the Reiss procedure due to the
close proximity of the blades relative to the wall tissue”
(Answer, page 3). We do not agree. While the Reiss cutting
head might be capable of removing wall tissue in addition to
plaque, there is no teaching in Reiss for operating it in such
a fashion. Nor, in our view, is there a basis from which it
can be concluded that the Reiss cutting head inherently
performs the appellant’s claimed method. From our
perspective, Reiss makes it clear that the cutting head
removes only the offending tissue. In this regard, we note
the following statements: “the cutting device can then be
controllably expanded . . . for cutting obstructive tissue
from the lumen” (column 2, lines 62-64); “it is desired that
some or all of the lesion 18 be cut away by cutting device 10"
(column 3, lines 36 and 37); and “the cutting action can be
Appeal No. 1998-1552
Application 08/698,982
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increased to the radius 60' or any intermediate desired size
to efficaciously cut away the unwanted material of lesion 18
as required” (column 5, lines 13-16). Nowhere is there even a
hint that the cutting device is intended to remove wall tissue
as well as plaque.
It therefore is our conclusion that the teachings of
Reiss fail to establish a prima facie case of obviousness with
regard to the subject matter recited in the independent claims
24, 29, 30 and 31, and we will not sustain this rejection.
Claim 28, which depends from claim 24, stands rejected as
being unpatentable over Reiss in view of Fischell, which is
cited for its disclosure of utilizing helical cutting blades
in a device for removing atheromas. Be that as it may,
Fischell fails to alleviate the deficiency in Reiss that was
discussed above, and thus the two references considered
together fail to establish a prima facie case of obviousness
with regard to the subject matter of claim 18. We also will
not sustain that rejection.
SUMMARY
The rejections are not sustained.
Appeal No. 1998-1552
Application 08/698,982
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The decision of the examiner is reversed.
REVERSED
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
NEA/ki
Appeal No. 1998-1552
Application 08/698,982
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Lynn G. Foster
602 East 300 South
Salt Lake City, UT 84102