Ex parte Engelson
| Decision Date | 16 November 1999 |
| Docket Number | Application 08/601,186,Appeal 1999-0610 |
| Parties | Ex parte ERIK T. ENGELSON, ROBERT HERGENROTHER and JOSEPH EDER |
| Court | United States Patent and Trademark Office. United States Patent and Trademark Office, Patent Trial and Appeal Board |
Before COHEN, JOHN D. SMITH and BAHR, Administrative Patent Judges
This is a decision on appeal from the examiner's final rejection of claims 49 through 60, which are all of the claims pending in this application.
We AFFIRM and remand the application to the examiner for further consideration as discussed infra.
The appellants' invention relates to a catheter assembly having at least a distal portion thereof coated with a lubricious coating. An understanding of the invention can be derived from a reading of exemplary claim 49, which reads as follows:
49. A catheter assembly, said catheter comprising an elongate tubular member having proximal and distal ends and an inner lumen extending between said ends, said member comprising:
The prior art references of record relied upon by the examiner in rejecting the appealed claims are:
Castillo et al. (Castillo)
5, 171, 232
Dec. 15, 1992
Eury
5, 342, 621
Aug. 30, 1994 (filed Sep. 15, 1992)
Engelson et al. (Engelson)
5, 531, 715
Additional references of record relied on by this panel of the Board are: [2]
Sahatjian et al. (Sahatjian)
5, 135, 516
Aug. 4, 1992
Lentz et al. (Lentz I)
4, 668, 224
May 26, 1987
Lentz et al. (Lentz II)
4, 773, 902
A reference made of record by this panel of the Board is: [3]
Whitbourne
5, 001, 009
Mar. 19, 1991
The following rejections are before us for review.
1. Claim 49 stands rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which appellants regard as the invention.
2. Claims 49 through 60 stand rejected under the judicially created doctrine of double patenting as being unpatentable over claims 1 through 16 of U.S. Patent No. 5, 531, 715.
3. Claims 49 through 60 stand rejected under 35 U.S.C. § 103 as being unpatentable over Castillo in view of Eury.
Reference is made to the brief (Paper No. 13) and the answer (Paper No 14) for the respective positions of the appellants and the examiner with regard to the merits of these rejections.
OPINIONIn reaching our decision in this appeal, we have given careful consideration to the appellants' specification and claims, to the applied prior art references, and to the respective positions articulated by the appellants and the examiner. As a consequence of our review, we make the determinations which follow.
The Indefiniteness rejection
The examiner's basis for rejecting claim 49 as being indefinite is that the claim contains the closed language "consisting essentially of" followed by the open-ended language "comprising." The examiner points out that, in view of the use of the language "comprising," the polymer or oligomer need not consist essentially of monomers of polysaccharides; rather the polymer or oligomer may contain other unclaimed elements (answer, page 3).
While we appreciate the examiner's position that the polymer need not consist essentially of monomers of polysaccharides, but, rather, may contain other unspecified elements, we do not agree that this renders claim 49, or any of the claims depending therefrom, indefinite. As pointed out by appellants (brief, page 8), "consisting essentially of" is directed to the coating, while "comprising" is directed to the polymer or oligomer. In other words, the claimed coating is limited to a lubricity-causing polymer or oligomer and other materials that do not materially affect the basic and novel characteristics of the claimed coating [4]; however, that lubricity-causing polymer or oligomer may also contain other components in addition to the monomers of polysaccharides. For example, the polymer or oligomer may include two different types of monomers, such as amylose and ethylene, instead of being a homopolymer. We find nothing wrong or indefinite in that.
For the foregoing reasons, we shall not sustain the examiner's 35 U.S.C. § 112 rejection of claim 49. [5]
The double patenting rejection
The examiner has rejected claims 49 through 60 under the judicially created doctrine of double patenting as being unpatentable over claims 1 through 16 of U.S. Patent No. 5, 531, 715, the parent application from which the instant application claims benefit under 35 U.S.C. § 120. The examiner has, however, indicated that this rejection may be overcome by the timely filing of a terminal disclaimer in compliance with 37 CFR § 1.321(b), an action which appellants have so far elected not to take.
Appellants' only argument with regard to the rejection of claims 49 through 60 under the judicially created doctrine of double patenting is that "no such terminal disclaimer is necessary under the current law where there is no possible extension of patent term beyond the 20-year term of the parent" (brief, page 10). In essence, appellants' argument is that, under the terms of 35 U.S.C. § 154(a)(2) [6], the term of a patent issuing on the instant application cannot possibly extend beyond the term of U.S. Patent No. 5, 531, 715. This assertion is not correct.
While section 154(c)(1) would appear to set the end of the term of U.S. Patent No. 5, 531, 715 on July 2, 2013 (the longer of 20 years from the filing date and 17 years from the issue date) and section 154(a)(2) would appear to limit the term of any patent issuing on the instant application to May 12, 2013 (20 years from the earliest filing date claimed under section 120), appellants' argument overlooks the fact that section 154(b) provides for possible extensions of the term of a patent if the issue of the patent is delayed due to (1) an interference proceeding or secrecy order or (2) appellate review, where the patent is issued pursuant to a decision in the review reversing an adverse decision on patentability. Thus, section 154 does not, as appellants suggest, ensure that a patent issued on the instant application will expire 20 years from the earliest filing date claimed under section 120 and, hence, does not ensure that the issuance of a patent on the instant application could not result in a time wise extension of the "right to exclude" granted by U.S. Patent No. 5, 531, 715.
Moreover, a second recognized objection to double patenting is the potential for harassment of an accused infringer by multiple parties with patents covering subject matter which is not patentably distinct. See, e g., In re Van Ornum, 686 F.2d 937, 944-48, 214 U.S.P.Q. 761, 767-70 (CCPA 1982). Thus, even assuming, arguendo, that a patent issuing on the instant application would necessarily expire on or before the expiry of the term of U.S. Patent No. 5, 531, 715 under the terms of 35 U.S.C. § 154, the 20-year term limitation of section 154 does not address this second concern. [7]
For the foregoing reasons, we shall sustain the examiner's rejection of claims 49 through 60 under the judicially created doctrine of double patenting.
The obviousness rejection
Before addressing the examiner's rejections based upon prior art, it is an essential prerequisite that the claimed subject matter be fully understood. Analysis of whether a claim is patentable over the prior art under 35 U.S.C. §§ 102 and 103 begins with a determination of the scope of the claim. The properly interpreted claim must then be compared with the prior art. Claim interpretation must begin with the language of the claim itself. See Smithkline Diagnostics, Inc. v. Helena Laboratories Corp., 859 F.2d 878, 882, 8 U.S.P.Q.2d 1468, 1472 (Fed. Cir. 1988). Accordingly, we will initially direct our attention to appellants' claim 49 to derive an understanding of the scope and content thereof.
Further, in proceedings before it, the PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant's specification. In re Morris, 127 F.3d 1048, 1054, 44 U.S.P.Q.2d 1023, 1027 (Fed. Cir. 1997).
Claim 49 requires a "lubricious coating" on the distal segment of the catheter assembly. We interpret the term "lubricious" as used in the claims as a term of art describing a surface presenting a low coefficient of friction. In other words, one of ordinary skill in the art reading the appellants' disclosure (note specification, pages 17 through 19, and page 3, lines 29 and 30), would have understood a "lubricious" coating to be a coating presenting a coefficient of friction approximating that of silicone, for example, or lower. [8]
In rejecting claims 49 through 60 under 35 U.S.C. § 103 the examiner relies upon the combined teachings of Castillo and Eury. The examiner and appellants agree that Castillo discloses a catheter comprising a relatively flexible distal segment (tip 14), a relatively stiff proximal segment (catheter body 15), carrying a reinforcing braid (column 3, lines 20-22) and a transition zone (13) which...
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