Details:
Ex parte Kucharczyk
Appeal 2010002564; Appl. No. 10/444,884; Tech. Center 3700
Decided: August 15, 2011
A representative claim on appeal read:
21. A cell delivery catheter system for delivering and positioning cells in a patient’s body, comprising:
a catheter body having a proximal end and a distal end, said catheter body defining a central
axis;
a plurality of optical fibers embedded within the catheter body or placed upon its outer or inner surface for conveying illumination to and optical signals from the target tissues;
a cell delivery barrel located within said catheter body having a distal aperture;
lumens surrounding the cell delivery barrel for delivery of said cells; the cell delivery barrel having a volume to carry and deliver cells within said volume, and
a source of fluid coupled to said cell delivery barrel for ejecting said cells from said cell delivery barrel under the control of the user.
The Examiner rejected both independent claims as obvious. The Examiner relied on a primary reference, March, for teaching everything except the limitation "conveying illumination to and optical signals from the target tissues." The Examiner relied on a secondary reference, Lemelson, for teaching the illumination limitation, and explained the combination as follows:
March does not teach that the optical fibers are used to convey illumination to and optical signals from the target tissues. March's optical fibers are instead used to ablate tissue.
Lemelson teaches a catheter with embedded optical fibers that are used for conveying illumination to and optical signals from target tissues. " ... light directed along and from the end of light pipe 22 is reflected through fluid, such as body liquid existing in cavity 16 and is modulated by the physical and chemical contents of such body fluid, causing variations in the content of such light, which variations may be detected by one or more techniques including computerized signal analysis of the electrical signals generated when the modulated light is converted to electrical signals. Furthermore, such received light may also be spectrographically analyzed to permit the light passing through the fluid sample to detect both physical and chemical variables present in the fluid being scanned thereby". Lemelson discloses that his device is capable of use with "medical materials" dispensers. Lemelson discusses using his catheter for cytometry.
(Emphasis added. Internal citations omitted.)
On appeal, the Applicant argued that March did not teach several elements. The Applicant also argued that Lemelson did not make up for the deficiencies in March:
The disclosure of Lemelson does absolutely nothing to advance the teachings of March nor to overcome the deficiencies of March by suggestion modification of the structure of March to meet the limitations of these claims. Lemelson is, in fact, nearly identical in subject matter disclosure to that of March. Lemelsons "medicinal materials" (a term selected in the rejection to imply a teaching far broader than that actually enabled by Lemelson) are again molecular materials. At no time does Lemelson suggest "delivery of cells," structure in the underlying device for delivery of cells, or any other function or structure that has been clearly shown to be absent from the teachings of March.
In the Answer, the Examiner clarified his position on several teachings in March, and also indicated that "Lemelson is only used to teach the function of the optical fibers."
The Board summarily reversed, finding that the Examiner's rejection was "devoid of an articulation of some reason with some rational underpinning to support the legal conclusion of obviousness."
My two cents: One failure, followed by two huge failures, followed by a correction.
Failure one: the conference of Examiners who signed off on the Answer and let this go to appeal. Failure two: the Applicant, who didn't even point out this glaring mistake – not during prosecution and not on appeal. It's great the Board corrected the error by reversing the rejection – but this was a ridiculous waste of everyone's time. Let's keep our fingers crossed that this case gets allowed instead of having prosecution reopened after reversal.
I look for a weakness in reason-to-combine every time I get an obviousness rejection. If the Examiner offers a weak reason – an advantage that doesn't exist, an advantage that isn't an advantage, a rationale that just doesn't fit the facts – then I'll attack it. So you'd better believe that I'd be all over a complete omission like this one.Sure, the Board may backfill to make up the deficiencies in the Examiner's position, and maybe I'll lose if that happens. But I'll give it my best shot.
By the way, the two sentences I quoted – Lemelson discloses use with medical materials dispensers and use of the catheter for cytometry – were the only sentences that were in any way related to reason-to-combine. And these two sentences amount to nothing more than an assertion that the references were analogous art.
"I comb carefully through every word of an obviousness rejection, looking for weaknesses in reason-to-combine."
ReplyDeleteComb?? Carefully?? Every word?? The average obviousness rejection (and I've seen thousands) consists of a sentence or two. You always find it in the same place (thanks to the USPTO examiner academy!!) formatted in almost the exactly the same way. As such, no need to search too hard for it.
Most times, it is nothing more than it would have been obvious to modify X in view of Y (to teach the missing limitations from X) because of some random benefit in Y (which has nothing to do with the missing limitations).
Perhaps one reason why the attorney didn't argue the obviousness rejection is that after KSR, many attorneys have simply given up. You have some good eggs at the BPAI, but most of the times, arguing obviousness is a waste of time. Mind you, I'll argue it whenever it is presented. However, you get better traction at the BPAI arguing that a reference does not teaching a particular limitation than the Examiner has not made out a proper obviousness analysis.
Also, if I read your comments correct, it wasn't just that the Examiner presented a deficient obviousness analysis -- they presented none. Not going to find that happening too often.
Preach on, Anonymous - my biggest frustration with the reasons to combine I've seen are that they typically have nothing at all to do with the feature(s) being incorporated into the primary reference.
ReplyDeleteHowever, that reasoning is slightly preferable to the "circular logic" rationale which pops up on a few rare occasions. Namely, "it would have been obvious to modify the primary reference to have the feature X taught by the secondary reference so that the primary reference would have feature X." ?!?!?
"Failure one: the conference of Examiners who signed off on the Answer and let this go to appeal."
ReplyDeleteAmen, my sister Karen. Thank you for picking up this banner and running with it.
Every single QAS in TC's 3600 and 3700 is absolutely useless and should be fired. Not reassigned, not demoted, not retrained, not anything even remotely resembling such usual PTO shenanigans. Waiting 2 years to get a BPAI decision like this is absolutely unacceptable. These useless QAS's are a major contributing factor to the BPAI backlog.
"Failure two: the Applicant, who didn't even point out this glaring mistake – not during prosecution and not on appeal."
Have to somewhat agree with the posters above. Too many APJ's are willing to overlook sh!tty rejections like this and fill in the gaps for the examiner, usually with a new reason to combine never before of record, and of course not constituting a new grounds of rejection. Arguing that features are not disclosed or suggested by the prior art references is always the safest, and strongest, argument. There's nothing more frustrating than making a very persuasive argument about no reason to combine or no expectation of success and having the some lifer APJ revert back to his/her examiner days and cite some form paragraph about "bodily incorporation" or "attacking the references individually" or whatever. APJ's that answer appellant arguments with MPEP form paragraphs should be immediately fired. Immediately.
"It's great the Board corrected the error by reversing the rejection – but this was a ridiculous waste of everyone's time."
This APJ is one of the good ones, if not the best.
"Let's keep our fingers crossed that this case gets allowed instead of having prosecution reopened after reversal."
ReplyDeleteI have my fingers crossed that the examiner simply writes the action properly.
So Karen, where's your posting on the decision that probably wipes out half of the "work productlol" you put out last year?
"You always find it in the same place (thanks to the USPTO examiner academy!!) formatted in almost the exactly the same way."
Thank go d for the little things.
While I like to see the board quickly reversing patently deficient rejections, I don't think the board did the Applicant any favor by reversing based on an issue not argued in the appeal brief. I would think the examiner will just rewrite the rejection with some sort of rationale to combine. This leaves the Applicant with the same issues he appealed in 2007. I imagine the case will take another run through the appeal process for the board to decide the issues they should have addressed this time.
ReplyDeleteI've been seeing a lot of reversals like this over the last year or so.
ReplyDeleteHuh. This is the first one I can recall where the Examiner literally did not provide a rationale for combining. But yeah, I feel like I'm seeing a good number of reversals where the Examiner's rationale for combining was *unpersuasive*.
ReplyDelete