Do you want to know how to beat an Examiner's 35 U.S.C. §103 obviousness rejection at the the Patent Trial and Appeal Board (PTAB)? Then it helps to read decisions where the PTAB reversed an Examiner's obviousness rejection. Today the PTAB did exactly that in the Ostrovsky decision, which involved catheters.
In today's Ex Parte Issac Ostrovsky (Appeal No. 2011-009091) decision, the claims involved an imaging catheter having distal and proximal ends and a lumen. The Examiner's argument went as follows: The Examiner asserted that the Ben Hain reference "discloses an imaging catheter for use in intracardiac drug delivery including an imaging element at the distal end." The Examiner also noted that Ben-Haim "fails to disclose the use of a coaxial cable for running the system in parallel with the sensor." Furthermore, the Examiner found that Sieben "teaches the use of a coaxial cabling, wherein the sensor and the imaging transducer are electrically coupled in a parallel configuration." The Examiner went on to conclude that "[i]t would have been obvious to one of ordinary skill in the art at the time of the invention to have included the connection components of Sieben with the system of Ben-Haim et al for the purpose of providing the best signal and clearest diagnostic image possible with very little loss or distortion from noise or crosstalk."
The Appellant argued that "Sieben does not teach or suggest a sensor adapted to communicate with a medical positioning system and an imaging transducer in a parallel electrical configuration with respect to the sensor as recited in claim 1." The Appellants also asserted that the "CCD arrays of Siben are not 'adapted to communicate with a medical positioning system' as recited in claim 1," but are "used to receive the signals from the ultrasound transducer. Appellants thus asserted that the "CCD arrays do not correspond to the claimed sensor and any teaching regarding them is irrelevant to the invention of claim 1."
The Board agreed with the Appellants that the Examiner had failed to set forth a prima facie case of obviousness. Specifically, the Board held:
"Rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417-18 (2007).Here, the Examiner points to two disparate teachings in the Sieben reference, but does not explain how the coaxial cable relates to the CCD array relates to the coaxial cabling, or how the teaching of the CCD array by Sieben relates to "a sensor adapted to communicate with a medical positioning system, wherein the sensor and the imaging transducer are each electrically coupled, in a parallel electrical configuration with respect to each other, to the center wire and the outer shield at the distal end of the coaxial cable," as required by claim 1. The rejection is thus too cursory to pass the Kahn test, and it is thus reversed. (Emphasis added
Lessons Learned: Read an Examiner's 35 U.S.C. §103 obviousness rejection carefully to make sure he or she has met the Kahn test. Has the Examiner explained how one references related to the other reference? Has the Examiner provided some rationale or logic as to how the references would be combined? Has the Examiner simply stated a conclusion that it would be obvious to combine references? These are the questions you should be asking yourself when determining whether to attach a 103 obviousness rejection for failing to meet the Kahn test. If you feel the Examiner has not met this test, then you may have grounds for a reversal at the PTAB.
Mark Terry is a registered patent attorney, Board Certified in Intellectual Property Law, with over a decade of experience prosecuting patent and trademark applications before the U.S. Patent and Trademark Office. Mark is a former Patent Examiner and former software developer.
