Ex Parte ArnottDownload PDFPatent Trial and Appeal BoardJun 12, 201712813035 (P.T.A.B. Jun. 12, 2017) Copy Citation 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.) 2 Appeal 2016-002643 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. 3 Appeal 2016-002643 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 4 Appeal 2016-002643 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). 5 Appeal 2016-002643 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 6 Appeal 2016-002643 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 7 Appeal 2016-002643 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.) 8 Appeal 2016-002643 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 9 Copy with citationCopy as parenthetical citation