Ex Parte Arnott

Patent Trial and Appeal Board

Jun 12, 2017

12813035 (P.T.A.B. Jun. 12, 2017)

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.
12/813,035 06/10/2010 Richard J. Arnott Arnott-1002 6095
36787 7590
BLYNN L. SHIDELER
THE BLK LAW GROUP
3500 BROKKTREE ROAD
SUITE 200
WEXFORD, PA 15090
06/14/2017 EXAMINER
YABUT, DIANE D
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/14/2017 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):
patents @ BLKLawGroup.com
cbelleci @ BLKLawGroup .com
blynn @ BLKLawGroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD J. ARNOTT
Appeal 2016-002643
Application 12/813,0351
Technology Center 3700
Before FRANCISCO C. PRATS, JOHN E. SCHNEIDER, and
RACHEL H. TOWNSEND, Administrative Patent Judges.
TOWNSEND, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to an
apparatus for removing a solid object from a body canal or vessel, which
have been rejected as anticipated. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.
STATEMENT OF THE CASE
The present application was filed on June 10, 2010 as a divisional
application under 35 USC § 121 of the parent application 10/415,683.
(Filing Receipt dated June 10, 2010.) US Application 10/415,683, published
1 Appellant identifies the Real Party in Interest as the inventor, Richard
Amott. (Appeal Br. 3.)
Appeal 2016-002643
Application 12/813,035
as US 2004/0167567 Al, on August 26, 2004. A final rejection was mailed
in US Application 10/415,683 on October 25, 2010 and the application went
abandoned thereafter.
Claims 1—9, 11, 12, and 14—20 are on appeal. Claim 1 is
representative and reads as follows:
1. An apparatus for removing a solid object from a body canal
or vessel, the apparatus including:
a guide wire;
a sack having a mouth and a closed bottom opposite the
mouth on the guide wire with the guide wire projecting through
the mouth of the sack; and
a resilient frame connected to the mouth of the sack for
biasing the mouth of the sack open around the guide wire;
wherein the improvement comprises:
a containment collar forming a sheath structure and
having a first tubular portion at a distal end thereof defining a
first lumen configured to receive the sack therein and a second
tubular portion at a proximal end of the sheath structure and
defining a second lumen of smaller diameter than the first
lumen;
a tubular attachment component within the second
tubular portion and coupled to the second tubular portion of the
containment collar; and
a pull wire connected to the tubular attachment
component and connected through the tubular attachment
component to the containment collar at the second tubular
portion wherein, movement of the pull wire is utilized to
manipulate the containment collar, and wherein the pull wire
extends from the containment collar sheath structure to the
proximal end of the apparatus in a position longitudinally
adjacent of the containment collar sheath structure.
(Appeal Br. 20.)
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Application 12/813,035
The following ground of rejection by the Examiner is before us on
review:
Claims 1-9, 11,12, and 14—20 under 35 U.S.C. § 102(b) as
anticipated by Cano (US 2004/0167567 Al).2
DISCUSSION
The Examiner’s rejection of claims 1—9, 11, 12, and 14—20 depends
upon the conclusion that the present application is not entitled to the
effective filing date of US Application 10/415,683, which published as
Cano. (Final Action 3.) Appellant contends that the present application is
entitled to priority of US Application 10/415,683 under 35 USC § 120-121.
(Appeal Br. 16.) We agree with Appellant that the present application is
entitled to priority of US Application 10/415,683 under 35 USC § 120.
An application for a patent is eligible for 35 U.S.C. § 121 protection
if it is a divisional or a descendant from a divisional application “filed as a
result of a restriction requirement.” Amgen Inc. v. Hoffman-LaRoche Ltd.,
580 F.3d 1340, 1354 (Fed. Cir. 2009); Bristol-Myers Squibb Co. v.
Pharmachemie B.V., 361 F.3d 1343, 1347-48 (Fed. Cir. 2004); Gerber
Garment Tech., Inc. v. Lectra Sys., Inc., 916 F.2d 683, 688 (Fed. Cir.
1990) (“To gain the benefits of Section 121 there outlined, [the patentee]
must have brought its ease within the purview of the statute, i.e., it must
have limited the claims in its divisional application to the non-elected
invention or inventions.” (Emphasis added)). Appellant indicates that the
application was filed as a divisional application of US Application
10/415,683, not that it was filed as a divisional application as a result of a
2 Cano et al., US 2004/0167567 Al, published Aug. 26, 2004.
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Application 12/813,035
restriction requirement made in US Application 10/415,683. (Appeal Br.
13.) We have reviewed the record of US Application 10/415,683 and do not
find that a restriction requirement was made. Thus, we find that 35 U.S.C.
§121 has no bearing on the question of whether or not Cano is or is not prior
art to the claims of Appellant’s present application.
Nevertheless, we agree with Appellant that it is entitled to the benefit
of the filing date of US Application 10/415,683 under 35 U.S.C. § 120. The
Examiner contends that (1) because of the change in inventorship in the
present application such that the only inventors named in US Application
10/415,683, Dr. Cano and Mr. Loebig, are no longer named inventors of the
present application and (2) “since inventor Amott was not listed as
contributing to any inventions disclosed in U.S. Application 10/415,683,”
Appellant is not entitled to the benefit of the filing date of U.S. Application
10/415,683. (Ans. 2.) We disagree with the Examiner’s analysis.
As a factual matter, we find that the Examiner’s characterization that
“Amott was not listed as contributing to any inventions disclosed in U.S.
Application 10/415,683” (Ans. 2 (emphasis added)) is not supported by the
evidence. We note that Mr. Amott was initially listed as an inventor on the
international application from which US Application 10/415,683 was filed
as the national stage application. (Appeal Br. 16; US Application
10/415,683 paper filed Mar. 19, 2004 (Form PCT/IB/306 noting originally
listed applicant and inventor Richard 3. Arnott was deleted from the record
of PCT/US01/109624.)) The Examiner does not dispute the foregoing.
While it is tme that Mr. Amott was removed as a named inventor
from US Application 10/415,683, all that can be concluded by Mr. Amott’s
removal is that Mr. Amott may not have been an inventor of what was being
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Application 12/813,035
claimed in US Application 10/415,683, Inventorship is a question of who
actually invented the subject matter claimed in a patent and is determined on
a claim-by-claim basis. See Trovan, Ltd. v. Sokymat SA, Irori, 299 F.3d
1292, 1302 (Fed. Cir. 2002) (
[A]n inventorship analysis, like an infringement or invalidity
analysis, begins as a first step with a construction of each
asserted claim to determine the subject matter encompassed
thereby. The second step is then to compare the alleged
contributions of each asserted co-inventor with the subject
matter of the properly construed claim to then determine
whether the correct inventors were named.
(Citation omitted)).3
Furthermore, we note that Appellant filed the present application as a
divisional application (Appeal Br. 13) of US Application 10/415,683, and
the Examiner does not dispute that the designation of the application as a
divisional was improper. “A divisional application is defined as ‘[a] later
application for an independent or distinct invention, carved out of a pending
application and disclosing and claiming only subject matter disclosed in the
earlier or parent application....’ MPEP § 201.06.” Pfizer Inc. v. Teva
Pharms. USA, Inc., 518 F.3d 1353, 1360 (Fed. Cir. 2008). We note that “a
divisional application contains an identical disclosure to its parent
application.” Id. 1359, Thus, the preponderance of undisputed evidence is
that Mr. Amott did contribute to inventions disclosed in US Application
10/415,683, despite the fact that he is not listed as an inventor on that
Application.
3 We need not, and do not address here, whether or not the removal of
Amott as an inventor in US Application 10/415,683 was proper or not
(Appeal Br. 16).
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Application 12/813,035
We now turn to the legal question of whether the present application
is entitled to the benefit of the filing date of US Application 10/415,683,
The Examiner, citing MPEP 602.01(c), contends that Appellant’s request to
change the inventorship such that there is no longer an overlap with the
inventorship of US Application 10/415,683 is analogous to “refiling to
change inventorship” that “result[s] in a loss of a benefit claim [when] there
is no overlap in inventorship between the two applications.” (Final Action
3.) We disagree with the Examiner’s conclusion. The fact that the
inventorship of the present application was changed during prosecution of
that application is not the same thing as refiling the application with non­
overlapping inventors.
With respect to the benefit question, 35 U.S.C. § 120 states (emphasis
added):
An application for patent for an invention disclosed in the
manner provided by section 112(a) (other than the requirement
to disclose the best mode) in an application previously filed in
the United States, or as provided by section 363, which is filed
by an inventor or inventors named in the previously filed
application shall have the same effect, as to such invention, as
though filed on the date of the prior application, if filed before
the patenting or abandonment of or termination of proceedings
on the first application or on an application similarly entitled to
the benefit of the filing date of the first application and if it
contains or is amended to contain a specific reference to the
earlier filed application.
By the plain language of the statute, the question as to benefit for purposes
of § 120 is whether the claims of the present patent application were
disclosed in the manner provided by § 112(a) (other than the requirement to
disclose the best mode) in US Application 10/415,683 and whether the
present application was filed by at least one of the inventors named in the
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Application 12/813,035
previously filed application. The Examiner cites no case, and we are aware
of none, that holds that to obtain benefit of the filing date of an earlier filed
application, 35 U.S.C. § 120 requires the inventorship to remain static during
the entirety of prosecution of that later filed application seeking to claim
benefit under § 120. The plain language of the statute merely requires
overlap of inventorship of the continuing application at the time of filing
with the parent application. Accord MPEP § 602.0I(c)(3)(IH)(E)
(confirming the requirement of 35 U.S.C. § 120 was met in the context of an
example having facts similar to those here—where inventor B (from
inventive entity A and B) was deleted prior to issuance of the parent
application and the divisional was filed naming only inventor B), and stating
complete “o verlap of inventorship need not be present on the date the
continuing application is filed nor present when the parent application issues
or becomes abandoned.”)
The Examiner does not dispute that US Application 10/415,683
adequately disclosed under 35 U.S.C. §112, the invention claimed in the
present application. (Appeal Br. 15, Ans. 2.) The Examiner also does not
dispute that the present application includes the requisite reference to US
Application 10/415,683 as the parent application, (Id.)
Nor is there a dispute that the present application was “filed by an
inventor or inventors named” in the previously filed LIS Application
10/415,683 application. Appellant explains, and the Examiner does not
dispute, that the present application when first filed “included claimed
subject matter that was invented by Dr. Cano and Mr. Loebig jointly with
Mr. Arnott.” (Appeal Br. 16.) The Examiner does not dispute that the
present application as filed listed Dr. Cano and Mr. Loebig as inventors, in
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Application 12/813,035
addition to including Dr. Amott as an inventor, as indicated on the
application data sheet dated June 10, 2010.4 Appellant asserts, and the
Examiner does not dispute, that Dr. Cano and Mr, Loebig “were
PROPERLY NAMED in the application as originally filed for the claimed
invention originally set forth [and that these] common inventors were only
deleted AFTER amendments to the claims deleted their inventive
contributions.” (Reply Br. 2.) Nor is there any dispute that the change in
inventorship was accomplished during prosecution of the present application
and not by filing a new application omitting Dr. Cano and Mr. Loebig.
Thus, we conclude that the requirements of 35 U.S.C. § 120 have been met
in the present application and that the claims on appeal are entitled to the
benefit of the filing date of US Application 10/415,683.
In light of the foregoing, the published US Patent Application
10/415,683, which is the Cano reference that the Examiner relies on to reject
pending claims 1—9, 11, 12, and 14—20 under 35 U.S.C. § 102(b), is not prior
art to the pending claims on appeal. Thus, we reverse the Examiner’s
rejection of claims 1—9, 11, 12, and 14—20 under 35 U.S.C. § 102(b) as being
anticipated by Cano.
4 While the application was filed without an oath or declaration signed by
Dr. Cano, Mr. Loebig, or Mr. Amott, Appellant filed a petition under 37
C.F.R. 1.47(a) for filing an application when an inventor refuses to sign the
oath or declaration, that was granted, permitting Mr. Amott to pursue the
application on behalf of himself and the nonsigning inventors. (Petition
dated Sept. 23, 2010; Petition Decision dated Nov. 4, 2010.)
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Application 12/813,035
SUMMARY
We reverse the rejection of claims 1—9, 11, 12, and 14—20 under
35 U.S.C. § 102(b) as being anticipated by Cano.
REVERSED
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