Tuesday, March 19, 2013

Appellant wins in Ex parte Hartley on 102 and on 103

The appellant prevailed at the Board in Ex parte Hartley

Within the decision, Perricone is cited for the law on anticipation:

“A single prior art reference that discloses, either expressly or inherently, each limitation of a claim invalidates that claim by anticipation.” Perricone v. Medicis Pharmaceutical Corp., 432 F.3d 1368, 1375 (Fed. Cir. 2005).

Picking and choosing was an issue in Hartley:

As stated in Arkley, an anticipatory reference under 35 U.S.C. § 102

[M]ust clearly and unequivocally disclose the claimed compound or direct those skilled in the art to the compound without any need for picking, choosing, and combining various disclosures not directly related to each other by the teachings of the cited reference. Such picking and choosing may be entirely proper in the making of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut with objective evidence any inference of obviousness which may arise from the similarity of the subject matter which he claims to the prior art, but it has no place in the making of a 102, anticipation rejection.

In re Arkley, 455 F.2d 586, 587-588 (CCPA 1972).

The instant situation is similar to Arkley, where affirmance of the
rejection would require picking and choosing from the reference in order to arrive at the claimed invention. That is, to satisfy claim 24, we would need to replace the self-expanding stent at the end of the tubular body taught by Greenberg with a balloon expandable stent, but retain the remaining self- expanding stents spaced apart on the tubular body.

As to obviousness, the examiner failed to mobilize facts:

The Examiner has failed in this burden in the instant case to provide any such evidence. See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970) (“Assertions of technical facts in areas of esoteric technology must always be supported by citation to some reference work recognized as standard in the pertinent art and the appellant given, in the Patent Office, the opportunity to challenge the correctness of the assertion or the notoriety or repute of the cited reference”). We do not specifically address whether stents made of shape memory materials such as nitinol are well known in the art, because the Examiner has failed to establish a prima facie case by failing to provide evidence supporting this fact. It is not the role of the Board to properly formulate a rejection which has been inadequately articulated.


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