Tuval, Yossi et al.

Patent Trials and Appeals Board

Apr 29, 2020

12556368 - (D) (P.T.A.B. Apr. 29, 2020)

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.
12/556,368 09/09/2009 Yossi Tuval P0035145.01 2381
77218 7590 04/29/2020
Medtronic Vascular - APV Division
c/o IP Legal Department
3576 Unocal Place
Santa Rosa, CA 95403
EXAMINER
SCHALL, MATTHEW WAYNE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
04/29/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
rs.docketingapv@medtronic.com
rs.patents.five@medtronic.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte YOSSI TUVAL, IGOR KOVALSKY, and ELI BEN HAMOU
Appeal 2018-007690
Application 12/556,368
Technology Center 3700
Before JENNIFER D. BAHR, WILLIAM A. CAPP, and LISA M. GUIJT,
Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE and enter A NEW GROUND OF REJECTION.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Medtronic Ventor Technologies Ltd.
(a subsidiary of Medtronic, Inc.) and Medtronic, Inc. as the real parties in
interest. Appeal Br. 2.
Appeal 2018-007690
Application 12/556,368

2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed “generally to prosthetic heart valves,
and specifically to prosthetic heart valves configured for transfemoral
delivery.” Spec. 1:10–12. Claim 1, reproduced below, is illustrative of the
claimed subject matter.
1. Apparatus comprising a valve prosthesis for attachment to a
native valve complex of a subject, the valve prosthesis
comprising:
a prosthetic heart valve; and
a support frame, which is shaped so as to define:
two or more commissural posts, to which the
prosthetic heart valve is attached, wherein the
commissural posts are arranged circumferentially around
a central longitudinal axis of the valve prosthesis, and
wherein each of the commissural posts extends in a
downstream direction at a first radially outward angle
with respect to the central longitudinal axis,
a bulging upstream skirt, and
a plurality of downstream axial support extensions,
which join a downstream side of the upstream skirt,
wherein each axial support extension extends in a
downstream direction at a second radially outward angle
with respect to the central longitudinal axis, the second
radially outward angle greater than the first radially
outward angle, and wherein the axial support extensions
are configured to apply an axial force in an upstream
direction to leaflets of the native valve complex.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Nguyen US 2005/0075717 A1 Apr. 7, 2005

Appeal 2018-007690
Application 12/556,368

3
REJECTIONS
Claims 1, 2, and 5–16 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Nguyen.
Claims 3, 4, and 17–20 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Nguyen.
OPINION
Prior Art Rejections
Independent claim 1 recites, in pertinent part, “two or more
commissural posts, to which the prosthetic valve is attached, wherein . . .
each of the commissural posts extends in a downstream direction at a first
radially outward angle with respect to the central longitudinal axis” and “a
plurality of downstream axial support extensions” each extending “in a
downstream direction at a second radially outward angle with respect to the
central longitudinal axis, the second radially outward angle greater than the
first radially outward angle.” Appeal Br. 23 (Claims App.). Claim 10
contains similar limitations, namely, “a plurality of commissural posts,”
each of which “defines a first nonzero angle in a radially outward direction
with respect to the central longitudinal axis” and “a plurality of axial support
extensions,” each of which “defines a second nonzero angle[, greater than
the first nonzero angle,] in the radially outward direction with respect to the
central longitudinal axis.” Id. at 25–26.
With reference to Figures 11 and 12 of Nguyen, the Examiner reads
the claimed “commissural posts” on “any of the struts forming the posts;
also the tabs (35).” Final Act. 3 (also citing “the struts forming commissure
posts in figure 13”). As for the “axial support extensions,” the Examiner
begins by reading this claim recitation on Nguyen’s vertical connecting
Appeal 2018-007690
Application 12/556,368

4
elements 51 (id.), but then appears to rely on Nguyen’s flared inflow rim 47
as the “axial support extensions” (id.at 2). Finally, in the Answer, the
Examiner provides an annotated version of Nguyen’s Figure 11 to identify
the structure corresponding to the claimed “commissural posts” and “axial
support extensions.” See Ans. 2–3.
The Examiner’s annotated Figure 11, provided on page 3 of the
Answer, is reproduced below.

The annotated Figure 11 is rotated 90 degrees counterclockwise, and
the annotations provided by the Examiner include, in pertinent part, two
arrows on the left. The lower left arrow points to the bottom of one of
diamonds 49 of outflow rim 48 of the anchoring structure, and the upper left
arrow points to an intermediate location on the lower left leg (or side) of
diamond 49.2 The Examiner considers the portion of this lower leg of

2 The Examiner’s discussion of the annotated figure refers to a “red arrow”
and a “blue arrow” (Ans. 2–3), but the annotated figure includes only gray
Appeal 2018-007690
Application 12/556,368

5
diamond 49 above the upper left arrow and the vertical portion of hexagon
shaped element 50 extending from this lower leg together to form a
“commissural post.” Ans. 2. Specifically, the Examiner explains that
the posts are considered by the examiner to begin near the red
arrow, and they are extending radially outward for at least a
portion of the post. The rest of the posts then extend roughly
parallel to the longitudinal axis of the device, however, at least
a portion of the posts do not.
Id. The Examiner finds that the axial support extensions extend from the
point of the lower left arrow to the point of the upper left arrow. Id. at 3.
According to the Examiner, these extensions “are clearly extending radially
outward from the longitudinal axis of the device, and they are extending
outward at a greater angle than the portion of the commissural posts near the
[upper left] arrow shown.” Id.
Appellant points out that leaflets 36 of Nguyen’s prosthetic valve are
attached to commissural tabs 35. Reply Br. 5. Appellant’s position appears
to be that Nguyen’s tabs 35, and not any portion of outflow rim 48,
correspond to the claimed “commissural posts.” See Reply Br. 2–5.
Appellant further contends that,
even if one were to consider the strut directly attached to each
tab (35) as the commissural post, that strut is parallel to the
central longitudinal axis, not extending in a downstream
direction at a first radially outward angle with respect to the
central longitudinal axis, as recited in claim 1, nor defining a

arrows. Like Appellant, we understand the “red arrow” to be a reference to
“the uppermost arrow on the left hand side” of the figure and the “blue
arrow” to be a reference to “the lower arrow on the left side” of the figure.
See Reply Br. 5, 7.
Appeal 2018-007690
Application 12/556,368

6
first nonzero angle in a radially outward direction with respect
to the central longitudinal axis, as recited in claim 10.
Id. at 7.
Appellant argues that the strut of diamond 90 on which the Examiner
relies for the portion of the post purportedly extending radially outward
relative to the central longitudinal axis of the valve prosthesis is not even the
portion of rim 48 attached to commissural tab 35 and, thus, would not
reasonably be considered to be part of the commissural post as recited in
claims 1 and 10.3 See Reply Br. 6. Appellant also submits that “the
Examiner’s use of the side view of FIG. 11 is misleading.” Id.
In discussing the embodiment of Figures 11 and 12, Nguyen expressly
discloses that “commissural tabs (35) of the valve (32) can be stitched
directly to the hexagon elements (50) of the outflow ring, rather than being
secured via slots” as shown in other embodiments. Nguyen ¶ 103; see, e.g.,
id., Fig. 6C (showing axially extending slot 21 and suture bores 41 at the
distal end of support post 22), Fig. 8 (showing axial slots 21 in support
posts 22), ¶¶ 90–91, 94 (describing Figures 6C and 8, respectively). Thus,
we are not persuaded that the portions of Nguyen’s outflow rim 48 to which
tabs 35 are attached cannot reasonably be considered to be “commissural
posts.” However, even assuming that one would consider the “commissural
post” to extend all the way down to the Examiner’s upper left arrow,4 as the

3 Claim 1 defines the commissural posts as components of the support frame
“to which the prosthetic heart valve is attached,” and claim 10 defines the
commissural posts as components of the support frame “configured to have a
prosthetic valve attached thereto.” Appeal Br. 23, 25 (Claims App.).
4 Note the new ground of rejection set forth below highlighting the
ambiguity with respect to the terminology “commissural post” and “axial
support extension.”
Appeal 2018-007690
Application 12/556,368

7
Examiner posits, for the reasons that follow, we agree with Appellant that
the Examiner’s use of Figure 11 is misleading, and we determine that the
Examiner fails to establish by a preponderance of the evidence that the
identified portions of Nguyen’s outflow rim 48 satisfy the limitations of the
“commissural posts” and “axial support extensions” recited in either claim 1
or claim 10.
The Examiner’s finding that Nguyen’s outflow rim defines a post
extending radially outward for at least a portion of the post near the upper
left arrow and an axial extension extending radially outward at a greater
angle than the portion of the post near the upper left arrow shown appears to
be premised on an assumption that the lower leg of diamond 90 to which the
Examiner’s upper and lower left arrows point bends such that its radially
outward angle with respect to the central longitudinal axis changes.
However, it is not sufficiently clear that this is the case, nor is it clear
whether the upper legs of the diamonds extend radially outwardly at all. See
Fig. 12 (not showing any curvature in the legs of the diamonds). As can be
seen more clearly in Figure 12 of Nguyen, the leg of diamond 90 to which
the upper and lower arrows in the Examiner’s annotated Figure 11 point are
not the portions of diamond 90 forming the bottom of hexagon element 50.
Rather, the top legs of diamonds 90 form the bottoms of hexagon elements
50 and extend to the vertically extending segments (connecting adjacent
hexagon elements) to which commissural tabs 35 are attached. These
segments, as the Examiner acknowledges, “extend roughly parallel to the
longitudinal axis of the device” (Ans. 2), and, thus, do not extend at a
radially outward angle with respect to the central longitudinal axis, as recited
in claim 1, or define a nonzero angle in a radially outward direction with
Appeal 2018-007690
Application 12/556,368

8
respect to the central longitudinal axis, as recited in claim 10. In short, the
Examiner fails to establish by a preponderance of the evidence that
Nguyen’s outflow rim 48 has different portions extending radially outwardly
at two different angles with respect to the central longitudinal axis, as called
for in claims 1 and 10.
It is not clear whether the Examiner maintains the finding, set forth on
page 2 of the Final Action, that there are “struts forming commissure posts
in [F]igure 13” of Nguyen. However, the struts forming post 52 (including
those of diamond shaped element 55 and distal end 54) appear to suffer from
a similar infirmity to the struts relied on in annotated Figure 11, discussed
above.
Further, the Examiner does not make any finding as to whether the
structure of Nguyen on which the Examiner reads the claimed “axial support
extensions” (whether vertical connecting elements 51 as set forth on page 3
of the Final Action, inflow rim 47 as set forth on page 2 of the Final Action,
or the portion of diamond 90 identified by the Examiner on pages 2–3 of the
Answer) “are configured to apply an axial force in an upstream direction to
leaflets of the native valve complex,” as recited in claim 1. Appeal Br. 23
(Claims App.). Thus, the Examiner does not set forth sufficient factual
findings to establish a prima facie case of anticipation of the subject matter
of claim 1.
For the above reasons, we do not sustain the rejection of claims 1
and 10, or their dependent claims 2 and 5–16, as anticipated by Nguyen.
The deficiencies in the anticipation rejection also pervade the obviousness
rejection of claims 3, 4, and 17–20 based on Nguyen. See Final Act. 4.
Appeal 2018-007690
Application 12/556,368

9
Accordingly, we do not sustain the rejection of claims 3, 4, and 17–20 as
unpatentable over Nguyen.
NEW GROUND OF REJECTION
Indefiniteness: Claims 1–20
Pursuant to 37 C.F.R. § 41.50(b), claims 1–20 are rejected under
35 U.S.C. § 112, second paragraph, as indefinite.
“As the statutory language of ‘particular[ity]’ and ‘distinct[ness]’
indicates, claims are required to be cast in clear – as opposed to ambiguous,
vague, indefinite – terms.” In re Packard, 751 F.3d 1307, 1313 (Fed.
Cir. 2014) (citation omitted). Claims, when read in light of the specification,
must “reasonably apprise those skilled in the art both of the utilization and
scope of the invention” using language “as precise as the subject matter
permits.” Id. In determining whether a claim is definite under 35 U.S.C.
§ 112, second paragraph, “[t]he USPTO, in examining an application, is
obliged to test the claims for reasonable precision according to [this
principle].” Id.
Although, for the reasons discussed above, we are able to reach a
determination on the merits of the prior art rejections before us in this appeal
without resolving this issue, the Examiner and Appellant disagree on the
proper construction of the term “commissural post” as used in claims 1
and 10. See Ans. 2; Reply Br. 2–4. Neither Appellant nor the Examiner
directs our attention to evidence showing that “commissural post” is a
recognized term of art as a component of a prosthetic valve support frame.
We note that Nguyen indicates that “commissural posts” are an anatomic
feature of the vessel wall in which the natural valve is located. See Nguyen
¶ 79. Specifically, Nguyen instructs that “[v]alve sinuses are dilations of the
Appeal 2018-007690
Application 12/556,368

10
vessel wall that surround the natural valve leaflets” and allow for maximal
opening of the leaflet at peak flow without the leaflet contacting the vessel
wall. Id. Typically, each natural valve has a separate sinus bulge or cavity;
for example, a two-leaflet valve is surrounded by two sinus bulges, a three-
leaflet valve is surrounded by three sinus bulges, and a four-leaflet valve is
surrounded by four sinus cavities. Id. “The individual sinus bulges or
cavities are separated by vertical fibrous structures known as commissural
posts,” which “define longitudinal structures with lesser outward curvature
than the sinus cavities.” Id. Nguyen illustrates such commissural posts 11
and sinus cavities 12 in Figures 3A–3C. “[T]he commissural posts serve as
the sites of attachment for the leaflets to the vessel wall (13).” Id.
We look to the surrounding context of Appellant’s claims and
Appellant’s Specification to determine the correlation, if any, between the
anatomical “commissural posts” and the “commissural posts” of the support
frame of Appellant’s prosthesis. It is clear from the context of claims 1
and 10 that a “commissural post” is a post of the support frame of the valve
prosthesis that is attached to, or configured to be attached to, the prosthetic
heart valve. Likewise, Appellant’s Specification discloses that support
frame 140 is “shaped so as to define three commissural posts 134 to which
prosthetic valve 118 is coupled.” Spec. 21:5–6. In this sense, the
“commissural post” of Appellant’s prosthetic valve support frame is
generally analogous to the natural anatomical “commissural post” of the
vessel wall.
Appellant contends that “the commissural posts cannot simply be any
post” of the support frame, but, rather, are “the posts to which the
commissures of the prosthetic valve are attached.” Reply Br. 4. Thus,
Appeal 2018-007690
Application 12/556,368

11
according to Appellant, “if the prosthetic valve is not attached to a post, it
cannot be a commissural post.” Id. For the reasons that follow, however,
this is not a sufficient test to determine whether a particular portion of a
unitary mesh-type support frame structure of the type disclosed by Appellant
for use in supporting/securing a prosthetic valve is or is not a “commissural
post” or part of a “commissural post.” In other words, the present
application provides insufficient guidance to permit a person having
ordinary skill in the art to distinguish, with reasonable precision, a
“commissural post” from the remainder of the support structure, including,
for example, an “axial support extension.”
As Figure 6A is the only drawing figure in the present application that
identifies angles of structures with respect to the central longitudinal axis,
and the Specification does not specifically discuss such angles in connection
with any other embodiments, we presume that claims 1 and 10 are drawn to
this embodiment (i.e., valve prosthesis 130, illustrated in Figures 6A–6D,
7A–7D, and 8A–8C), and we focus our attention primarily on this
embodiment in construing the claims. Accord Appeal Br. 2 (Summary of
Claimed Subject Matter, referencing Figs. 6A–6D, 8C).
Appellant’s Specification discloses valve prosthesis 130 comprising
support frame 140, which defines three commissural posts 134, upstream
skirt 131, and downstream axial support extensions 128. Spec. 21: 4–7, 17–
18. According to the Specification, downstream axial support
extensions 128 “join a downstream side of upstream skirt 131, and extend in
a downstream direction at an angle ø with respect to central longitudinal
axis 116 of valve prosthesis 130, while commissural posts 134 extend in a
downstream direction at an angle α with respect to axis 116.” Id. at 21:18–
Appeal 2018-007690
Application 12/556,368

12
25 (noting that “the angles are shown in Fig. 6A”). “Angle ø is greater than
angle α,” and, thus, “downstream axial support extensions 128: (a) apply an
upstream axial force to a downstream side of the native leaflet tips, (b) do
not touch the leaflets of the prosthetic valve when the prosthetic valve is in
its open position, and (c) provide stability of support frame 140.” Id.
at 21:25–31.
Figure 6A, cited by the Specification as purportedly showing angles ø
and α, appears to identify two angles, one of which looks like “θ” and the
other of which looks like “α,” relative to central longitudinal axis 116.
However, Figure 6A does not include a reference numeral “128” to identify
the downstream axial support extensions. The angle “θ” in Figure 6A
appears to be the angle between central axis 116 and some structure
identified as element “133.” We presume that the element labeled “133” is
what the Specification refers to as “downstream axial support element 128”
and that angle “θ” in Figure 6A and angle “ø” in the Specification denote the
radially outward angle defined by downstream support element 128 with
respect to central longitudinal axis 116. Angle “α” appears to be the angle
between commissural post 134 and central axis 116. Appellant’s
Figures 6B–6D are of very poor quality and include reference numerals that
are either illegible or barely legible.
Figures 6B–6D appear to identify elements 128 of support frame 140
forming the bottoms of six primary cells joined at five junctions, with
commissural posts located at three of these five junctions. Although not
labeled in Figure 6A, and labeled with an illegibly small font in Figures 6B
and 6C, upper sinus support elements 136 appear to form the tops of these
primary cells. See Figs. 6B, 6C; Spec. 22:25–23:4. The Specification
Appeal 2018-007690
Application 12/556,368

13
describes axial extensions 128 joining upper sinus support elements 136 at
the junctions between the primary cells without a commissural post and
describes the upstream ends of the remainder of upper sinus elements 136
joining the downstream ends of commissural posts 134. Id. at 22:27–30;
Fig. 6C. Further, according to the Specification, “[f]or some applications, an
upstream-most portion of each downstream axial support extension 128 joins
the downstream site of upstream skirt 131, and two lateral portions of each
extension join respective cells of the frame that extend in an upstream
direction from respective commissural posts 134.” Id. at 22:3–8.
Figures 6B and 6C appear to best illustrate the cells extending in an
upstream direction from commissural posts 134.
Of all of the drawings illustrating valve prosthesis 130, Figure 8C
depicts commissural posts 134 most clearly. Aside from what appears to be
some sort of thread or suture wrapped helically around them, commissural
posts 134 appear structurally indistinguishable from downstream axial
support extensions 128, as illustrated in Figure 8C. Although, likely for
clarity, Figure 8C shows only a portion of valve support frame 140, and
omits prosthetic valve 118, we speculate that this thread or suture may be
intended to represent attachment of commissural posts to the prosthetic
valve. By contrast, other drawings in the present application, such as, for
example, Figures 1A, 1B, and 5A–5C, illustrating other embodiments of
valve prostheses, depict commissural posts 34 comprising widened plate-like
sections having axially extending slots and suture bores, much like the distal
ends of support posts 22 in Figures 6C and 8 of Nguyen.
Given the structural similarity between element 134, which Appellant
identifies as a “commissural post,” and other portions of support frame 140,
Appeal 2018-007690
Application 12/556,368

14
such as axial support extensions 128, it is unclear how a person having
ordinary skill in the art would be able to distinguish a “commissural post,”
as set forth in claim 10, from the remainder of the support frame, including
“axial support extensions.” We appreciate that claim 10 recites that “the
commissural posts are arranged about a central longitudinal axis of the
support frame and are configured to have a prosthetic valve attached
thereto.” Appeal Br. 25 (Claims App.). However, claim 10 does not
positively recite a prosthetic valve, much less that the commissural posts are
attached thereto. Axial support extensions 128 are arranged about a central
longitudinal axis of the support frame and appear similarly amenable to
having a prosthetic valve attached thereto, such as by stitching to a valve
commissural tab, as evidenced by Nguyen. See, e.g., Nguyen, Figs. 11, 12
(commissural tab 35); ¶ 103 (teaching that commissural tabs 35 of prosthetic
valve 32 can be stitched directly to hexagon shaped elements 50). Thus, a
person having ordinary skill in the art would not be reasonably apprised of
the scope of the term “commissural post” or “axial support extension” as
used in claim 10, so as to be able to distinguish them from one another or
from the remainder of the support frame and to ascertain whether a
particular support frame satisfies the angle requirements set forth in claim 1.
Likewise, although claim 1 positively recites a prosthetic heart valve
attached to the commissural posts, given the aforementioned lack of
guidance in the Specification or drawings for distinguishing between a
“commissural post” and the remainder of the support frame, including an
“axial support extension,” a person having ordinary skill in the would not be
reasonably apprised of the scope of the term “commissural post.” For
example, a skilled artisan may be able to determine, readily and with
Appeal 2018-007690
Application 12/556,368

15
reasonable certainty, that portions of a support frame of a valve prosthesis in
direct contact with a commissural tab of a prosthetic valve, or in direct
contact with stitches attaching the support frame to a prosthetic valve, are
part of a “commissural post.” However, it is unclear how one would
determine, with reasonable certainty, where the “commissural post” ends,
and the remainder of the support frame (e.g., axial support extensions) begin,
especially for a unitary mesh-like support frame comprising a plurality of
spaghetti-like segments that diverge away from and converge toward other
segments so as to form cells, such as support frame 140 disclosed by
Appellant.
Merely by way of example, because both the two lateral portions of
each axial support extension 128 joining respective cells that extend in an
upstream direction from respective commissural posts 134, and the frame
segments forming these respective cells (see Spec. 22:3–8), transition into
commissural posts 134, as illustrated in Figure 6B, an artisan would not be
able to determine, with reasonable certainty, where commissural posts 134
end and the lateral portions of axial support extension 128 and upstream
frame segments begin. Indeed, some artisans, such as Nguyen, might
wonder why Appellant characterizes the two lateral portions as being part of
the extension, rather than part of the commissural post, and might interpret
the respective cells that extend upstream from the commissural posts, to be
part of the “commissural posts.” See, e.g., Nguyen, Fig. 13; ¶¶ 104–105
(describing three posts 52, each comprising distal end 54 for attachment to
commissural tabs 35 of the prosthetic valve and diamond-shaped
elements 55, extending from the proximal end to the distal end of the valve
and providing cantilevered support to tabs 35). Similarly, one artisan, if
Appeal 2018-007690
Application 12/556,368

16
asked to identify the “commissural posts” in the embodiment of Nguyen’s
Figures 11 and 12, consistent with Appellant’s Specification and drawings,
might include only the vertical/longitudinal members adjoining hexagon
elements 50, while others might also include diamonds 49, or at least the top
portions thereof, that contact tabs 35, under each of the vertical/longitudinal
members as part of the “commissural posts.” Still others might include the
entirety of each of the adjoining hexagon elements 50 to which commissural
tabs 35 are stitched directly (Nguyen ¶ 103) as part of the “commissural
post.”
For the above reasons, when considered in light of the underlying
disclosure of the present application, as viewed by one of ordinary skill in
the art, the terms “commissural post” and “axial support extension” are
vague, ambiguous, or indefinite terms. Thus, claims 1 and 10, and their
dependent claims, when read in light of the Specification, do not reasonably
apprise those skilled in the art of the scope of the invention, as required by
the second paragraph of 35 U.S.C. § 112.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/
Basis
Affirme
d
Reversed New
Ground
1, 2, 5-16 102(b) Nguyen 1, 2, 5-16
3, 4, 17-20 103(a) Nguyen 3, 4, 17-20
112, 2nd
paragraph
1-20
Overall
Outcome
1-20 1-20

Appeal 2018-007690
Application 12/556,368

17
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.” 37 C.F.R. § 41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.
Appeal 2018-007690
Application 12/556,368

18
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). See 37 C.F.R.
§ 1.136(a)(1)(iv).
REVERSED; 37 C.F.R. § 41.50(b)