Today, the Board of Patent Appeals and Interferences (BPAI) of the U.S. Patent and Trademark Office reversed a Patent Examiner's rejection of a key Guidant patent application for a heart stent used to treat arteriosclerosis. As a Florida Patent Lawyer with a daily patent prosecution docket, I follow cases such as these for practice pointers. This case illustrates an important point pertaining to rejections based upon 35 U.S.C. sec. 102(b) as being anticipated by a prior art patent.
Today's decision of the BPAI revolves around a rejection by the Patent Examiner wherein he asserted that two (2) elements of the claimed invention were disclosed by the presence of one (1) element in the prior art patent he cited. It is common for a Patent Examiner to claim that the two widgets of a patent claim are disclosed by a prior art patent that discloses only one widget. The BPAI disagreed with the Patent Examiner, citing See e.g. Lantech, Inc. v. Keip Machine Co., 32 F.3d 542 (Fed. Cir. 1994)(in infringement context, a single conveyor held to not meet claim element requiring at least two conveyors); In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)(claim requiring three separate means not anticipated by structure containing two means where one of the two means was argued to meet two of the three claimed means).
The practice pointer I learned from this BPAI decision is that 35 U.S.C. sec. 102(b) rejections by a Patent Examiner should be examined closely to ensure that, in fact, each element of the rejected claim is disclosed by a separate element in the prior art being cited against the claim. For a 35 U.S.C. sec. 102(b) rejection, it is not sufficient for a Patent Examiner to find only one instance of a claimed element in a prior art patent, when in fact two instances of the element are claimed. The patent attorney that prosecuted this Guidant patent application was astute in catching this Examiner flaw, thereby resulting in this key Guidant invention moving towards an issued patent. The financial incentives in this case are quite high, seeing as stent sales are estimated at $3 billion per year.