Ex Parte Sazy

Board of Patent Appeals and Interferences

Dec 21, 2010

10655571 (B.P.A.I. Dec. 21, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JOHN A. SAZY
____________

Appeal 2009-007953
Application 10/655,571
Technology Center 3700
____________

Before WIILIAM F. PATE, III, STEFAN STAICOVICI, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING1

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 2009-007953
Application 10/655,571
2
STATEMENT OF THE CASE
John A. Sazy (Appellant) filed a “Response to Decision on Appeal to
Reopen Prosecution and Amendment for Reconsideration by [the]
Examiner” on August 9, 2010 (hereinafter “Response”) from the decision of
this Board mailed June 11, 2010 (hereinafter “Decision”).
The Decision reversed the rejection of claims 1, 3, 5, 6, and 10-31
under 35 U.S.C. §§ 102(b) and 103(a). The Decision further entered a new
ground of rejection of claims 1, 3, 5, 6, and 10-31 under 35 U.S.C. § 112,
second paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention.
In the Response, Appellant adds new claims 32-44 and provides new
evidence of the meaning of the term “banana-shaped” in the form of a
journal paper entitled “Comparison of cage designs for transforaminal
lumbar interbody fusion: A biomechanical study,” W. Cho et al., 23 Clinical
Biomechanics 979 (2008) (Hereinafter “Cho”). Response 6-8 and 12.
Appellant contends that the Board overlooked or misapprehended the
issue that the term “banana-shaped” is indefinite because the Cho paper
shows that a person of ordinary skill in the art would know what a “banana-
shaped” prosthesis is and as such, “would find no ambiguity in the term
banana-shaped.” Response 14.

ANALYSIS
In view of our new ground of rejection of claims 1, 3, 5, 6, and 10-31
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention, Appellant chose to reopen prosecution before the
Examiner by filing both an amendment and new evidence. Response 1, 6-8
Appeal 2009-007953
Application 10/655,571
3
and 12. See 37 CFR 41.50(b)(1). However, in the Advisory Action mailed
August 24, 2010, the Examiner found that the amendment submitted by
Appellant was inappropriate because the amendment added new claims
without either amending the rejected claims or substituting new claims for
the rejected claims. See MPEP § 1214.01(I). Accordingly, the Examiner
correctly did not enter the new claims and returned the application file to the
Board for consideration of the amendment as a request for rehearing under
37 CFR 41.50(b)(2). See Id.
Appellant argues that the term “banana-shaped” is not indefinite
because Figure 1a of Cho shows a banana-shaped cage. Response 12.
Accordingly, Appellant asserts that because Figure 1a of Cho shows a
banana-shaped cage “[t]here can be no doubt that persons of ordinary skill in
this art know what a banana shaped cage is.” Response 13. However, we
note that the disclosure of Cho was not before us when the decision of this
Board was made (the Decision was mailed June 11, 2010). Cho’s paper was
filed subsequent to the Decision, specifically, it was filed with the Response
on August 9, 2010. It is a well-nigh insurmountable burden to convince this
Board that we have overlooked material that was not submitted. Prescience
is not a required characteristic of the Board. Cf. Keebler Co. v. Murray
Baking Prods., 866 F.2d 1386, 1388 (Fed. Cir. 1989). The Board need not
divine all possible afterthoughts of counsel that might be asserted for the
first time on appeal. Id. In conclusion, we could not have misapprehended
or overlooked the indefiniteness of the term “banana-shaped” in view of
Cho’s paper because Cho’s paper was not before us when we reached our
decision.

Appeal 2009-007953
Application 10/655,571
4
CONCLUSION
In light of the above, Appellant’s Response fails to persuade us that
we erred in entering a new ground of rejection of claims 1, 3, 5, 6, and 10-31
under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter which applicant
regards as the invention. Therefore, we have granted Appellant’s request to
the extent that we have considered our Decision in light of the points raised
therein, but have denied the request with respect to any modification to the
Decision.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).
DENIED

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