Takeaway: The BPAI reversed an obviousness rejection when the claimed invention solved one problem, yet the primary reference solved another problem, and the secondary reference solved yet another. (Ex parte Young, March 29, 2011.)
Ex parte Young
Appeal 2010010001; Appl. No. 12/103,325; Tech. Center 3700
Decided March 29, 2011
The claimed subject matter was directed to a medical device, such as a feeding tube. Claim 1, a representative claim on appeal, read:
An example embodiment is shown below, with distal projections 16.
1. A medical device configured for dynamic movement through a body canal toward an interior target site and removal therefrom, said device comprising
an elongate tubular member having a plurality of distal projections disposed on an exterior surface thereof,
said projections extending outwardly from the exterior surface of the tubular member a distance sufficient to engage an interior surface of the body canal during bodily contractions therein,
said distal projections being configured so as to promote ingress of said device in response to said contractions,
at least some of said projections being formed of a composition that is soluble under bodily conditions at said body canal.
The Examiner rejected claim 1 as obvious, alleging that the primary reference (Reydel) taught a medical device with distal projections as claimed, except for the soluble composition. The Examiner relied on the secondary reference (Anders) for teaching a catheter having a portion that is formed of a composition soluble under bodily conditions. The Examiner alleged that using Anders' soluble composition to form Reydel's distal projections would be obvious "to provide a composition that will dissolve in bodily fluids" as taught by Anders. The Examiner further alleged that "it is within the general skill of a worker in the art to select a known material based on its suitability for the intended use as a matter of obvious design choice."
The Appellant argued that Reydel's tube differed from the claimed tube because although the projections are useful for inserting the tube, the projections impede removal of the tube. The Applicant argued that the claimed invention improves on Reydel's tube by providing a mechanism for removing the projections once the tube is placed: the projections dissolve. Thus, the invention "addresses difficulties that may be encountered when attempting to withdraw the tube." The secondary reference, Anders, disclosed a needle with a soluble tip. But the problem addressed by Anders was much different: protecting healthcare workers from needle sticks.
The Board agreed with the Applicant and reversed the obviousness rejection. The Board found that "the Examiner did not establish a reason based on the evidence in the record for combining Reydel with Anders to result in a medical device comprising projections formed of a composition that is soluble in a body canal."
The Board first noted the problem addressed by, and the solution provided by, the claimed invention: unidirectional projections that promote ingress but then dissolve to eliminate an impediment to egress. The Board then contrasted this with the problem and solution of Reydel – bidirectional projections that assist in ingress and remain during egress without causing trauma. Finally, the Board noted that Anders addressed yet another problem, needle stick, that can occur outside the body after removal of the device. The Board concluded that "the Examiner has not shown through evidence that, at the time of the invention, it would have been desirable to have a medical device including a tubular body with exterior projections that are present only during ingress, much less to use dissolvable flaps as a solution."
My two cents: I haven't seen many cases where the Board used this sort of "problem" analysis to decide obviousness.
The Board focused on the teachings of the references as a whole rather than just the specific features used by the Examiner. The Board found that the "bidirectional" projections in Reydel functioned differently than the Applicant's projections, and used this in finding non-obviousness. This argument wouldn't have gone far in an anticipation rejection. First of all, the claims didn't recite the unidirectional behavior, so the feature is irrelevant. Second, the fact that a reference teaches more than is claimed – Reydel's projections were flexible and thus "bidirectional" – is irrelevant to anticipation. Yet the Board did looked to these aspects of Reydel in deciding whether or not a POSITA would combine Reydel with Anders.
The Board did not comment on the Examiner's "obvious design choice to select a suitable material" rationale. Perhaps the factors which the Board focused on outweighed the suitable material rationale. In other words, it's obvious to select a suitable material unless there are reasons why it's not obvious, such as those the Board found.
The Board also didn't comment on the Examiner's circular rationale for combining: it would be obvious to add claimed feature A (soluble projections) to the primary reference to produce the result provided by feature A (soluble projections).