Details:
Ex parte Fleming
Appeal 2009-005838, Appl. No. 10/834,687, Tech. Center 3700
March 18, 2010
The Applicant appealed a claim to a stent (a tube inserted into a blood vessel) which included a lattice with a closed (unexpanded) configuration and an open (expanded) configuration. The claim also defined the lattice as "made of a material that is normally prone to crushing, deformation or recoil."
The decision hinged on whether the term "normal" referred to the lattice in its unexpanded configuration or its expanded configuration.
In the Appeal Brief, the Applicant explained in some detail why the stent in the reference would not function properly if made of a material that was prone to crushing, deformation or recoil. However, the Applicant's argument assumed that the the "normally prone to" language referred to the expanded state. Yet the Examiner explained – in the final rejection, and then again in the Answer – that he was interpreting "normally" as referring to the unexpanded state, before the loops in the lattice interlocked.
The Board noted that:
It is not disputed that prior to deployment and interlocking, Stenzel's stent is designed to be flexible and therefore at least prone to deformation ... Thus, if we adopt the Examiner's construction of the term "normally," Stenzel clearly meets the claim.
The Applicant's specification described how the interlocked hoops in the lattice allow use of materials not appropriate "in traditional stents," such as materials "that exhibit crushing or recoil upon deployment of the stent." However, the Board refused to interpret "normally" as "upon deployment," stating that to do so would be to import limitations into the claims. The Board then stated that the Examiner's interpretation of "normally" (i.e., in the unexpanded state) was reasonable and not inconsistent with the specification, and affirmed the anticipation rejection.
My two cents: I've seen plenty of file histories where the Examiner's reading of the reference and/or the claims wasn't clear until the Examiner's Answer – but this wasn't one of them. It appears to me that the Applicant didn't really pay attention to what the Examiner was saying. Amending the claims from "normally" to "upon deployment of the stent" would probably have overcome the anticipation rejection. On the other hand, the Examiner also gave a "obvious in the alternative" rejection using the same reference, and the Board found that even using the Applicant's claim interpretation, the claim was obvious. So the application was probably doomed anyway.
I also wonder if "normally prone to" accurately describes the material (as the Applicant claimed), or should instead describe the lattice (the claimed element). The way I see it, the properties of the plastic itself don't change. Instead the properties of the lattice as a whole change when the hoops in the lattice lock together in the expanded state. So, I think "made of a material that is prone to crushing, deformation or recoil when the lattice is in the expanded state" is a better way to express the feature.
112 2nd paragraph under Miyazaki would likely have saved the applicant a trip to the board and the examiner the time and trouble of doing appeal conferences. Examiners should not hesitate to use it.
ReplyDeleteActually never mind that, they still would have gone to the board apparently in this case. The whole obvious in the alternative grounds of rejection would still have been there.
ReplyDelete>112 2nd paragraph under Miyazaki would likely
ReplyDelete>have saved the applicant a trip to the board
Agreed that Miyazaki (claim is indefinite when amenable to multiple interpretations) is applicable here.
I find it interesting that the *Board* didn't enter an indefiniteness rejection. They could have done that *and* refused to rule on the prior art rejections under In re Steele.
>they still would have gone to the board
>apparently in this case. The whole obvious in
>the alternative grounds of rejection would
>still have been there.
Can't know what the Applicants would have done with an indefiniteness rejection. Maybe appealed anyway. Maybe amended the claims to overcome. Maybe abandoned ...
Don't see what the presence of a 103-in-the-alternative has to do with this decision.
I was just saying that the 103 in the alternative rejection would have applied to their claim after they got done amending around the 112 rejection, and they still would have wanted to appeal that alternate 103 grounds of rejection. You surmise we can't tell what applicant would have done with the 112, but so far I've had a 100% success rate with getting an amendment. I had one dude argue with me (for about 15 pages), but he capitulated in the end. He was even an old buddy of my SPE. There may have been a couple of others who argue at the same time as amending but I think that's about it.
ReplyDeleteThe real beauty of the 112 under Miyazaki, which is the deathblow for pretty much anyone arguing against it, is that they inevitably put their claim construction on the record. And when that happens, bam, another 112 for failure to claim that which the applicant subjectively believes to be his invention with their reply cited as evidence. There is no escaping that one.
It is rather evil I know, but I prefer to not have them put up more of a fight than necessary and get the case resolved.
>I was just saying that the 103 in the
ReplyDelete>alternative rejection would have [still] >applied to their claim
Gotcha. Because the amendment we're talking about is something like replacing "normally" with "in the expanded state". Which would have overcome both the 112 and the anticipation. But not the obviousness.
>put their claim construction on the record.
Certainly having each side understand how the other side is interpreting the claim limitations would go a long way to resolving disputes.
Yet an Examiner isn't required to actually explain how he's interpreting the claims. Why is that?
>inevitably put their claim construction on the
ReplyDelete>record. And when that happens, bam, another
>112 for failure to claim that which the
>applicant subjectively believes to be his
>invention
Is the "another 112" you're referring to a written description rejection?
Surely that's not *inevitable*. Perhaps you're really saying that you think many Applicants have claims which don't have written description support for the full breadth of their claims. But that this isn't apparent until the breadth of the claim is spelled out?
"Yet an Examiner isn't required to actually explain how he's interpreting the claims. Why is that? "
ReplyDeleteYou say that, but if you ask politely and approach the spe if necessary, nearly 100% of the time they will be so required.
You're right that we don't have to do it in each action, especially first actions. That's mostly because we assume that the interested reader can come to the same construction as we have without our holding their hand.
Also, because OA's take enough time to write as is. Be glad you get more than the 1970's short form. Word on the street is that they were considering going back to that, or something similar.
"Is the "another 112" you're referring to a written description rejection? "
ReplyDeleteNope, another 112 2nd. See the very last statement in 112 2nd. They even made us a new FP for these types of rejections shortly after I started making them myself.
"Surely that's not *inevitable*. "
It could be done without it sure, but every case that I've seen argued they do include it.
There are, practically speaking, only two ways to argue a properly made Miyazaki rejection.
One is to argue that at least all but one of the office's interpretations are unreasonable, and you'd better have a dam good reason to argue that. Note that this doesn't really happen in my cases because my interpretations are reasonable, so, practically speaking this line of argument is foreclosed.
The other is to argue that your interpretation (one which the PTO did not put down yet) is clearly the best for one reason or the other (ivo spec, etc). But to do this, you have to put your construction down.
A third argument of course would be to argue against Miyazaki's holding outright, but I've yet to see that. I will relish the day.
So, practically speaking, the only way to argue against my Miyazaki rejections is to provide your own construction that is plainly more proper. And that is all I've seen so far.
Oh, and I note that I usually do put down my claim constructions, or at least partial ones, in my Miyazaki rejections.
>Nope, another 112 2nd. See the very last
ReplyDelete>statement in 112 2nd.
Interesting. I'll be on the lookout for that.
>There are, practically speaking, only two
>ways to argue a properly made Miyazaki
>rejection.
Good to know your take on that. Thanks.
"The real beauty of the 112 under Miyazaki, which is the deathblow for pretty much anyone arguing against it, is that they inevitably put their claim construction on the record. And when that happens, bam, another 112 for failure to claim that which the applicant subjectively believes to be his invention with their reply cited as evidence. There is no escaping that one."
ReplyDeleteLOL
6, you'll never cease to amuse.
"Good to know your take on that. Thanks. "
ReplyDeleteWell if you have another one then please, be my guest, do tell.
"6, you'll never cease to amuse. "
You'll never cease to get 112 2nd'ed, so we're even I guess.
"You'll never cease to get 112 2nd'ed, so we're even I guess."
ReplyDeleteYou are never going to be affirmed on a "112 for failure to claim that which the applicant subjectively believes to be his invention with their reply cited as evidence."
You'll never even get that to the Board.
"There is no escaping that one."
ROFLMAO
"You are never going to be affirmed on a "112 for failure to claim that which the applicant subjectively believes to be his invention with their reply cited as evidence."
ReplyDeleteYou'll never even get that to the Board."
You're 100% right, nobody will ever appeal it :(. I've probably done it 10 times already, several times where it was the sole rejection. No appeal :(
"There is no escaping that one."
ROFLMAO"
I kno rite?
Oh, and I'll let you know the next time the board does rule on exactly that issue. I've seen it before, but I didn't bother to fav it. It did not turn out well for applicant.
ReplyDeleteCan't you anons use fake names? I can't tell who is replying to whom when *everybody* is posting as Anonymous.
ReplyDelete