Ex parte Rasmussen
Appeal 2011012484; Appl. No. 11/998,532; Tech. Center 3700
Decided: July 31, 2013
The application on appeal was directed to an aortic implant. A representative independent claim on appeal read:
1. An aortic implant includingOne of the dependent claims on appeal read:
a graft portion,
a corrugated portion integral with and extending from the graft portion, and
a fixing ring substantially at the junction between the graft and corrugated portions, the fixing ring providing a volume into which fixing sutures can be made to pass.
6. An implant according to claim 1,wherein the fixing ring is made of a foam, rubber, or rubber like material.The Examiner rejected all claims as being obvious over a combination of two references, and maintained the rejection in a Final Office Action. The Applicant appealed, and argued several dependent claims for the first time.
In arguing dependent claim 6, the Applicant first noted that the Examiner had characterized the secondary reference, Brauker, as teaching that PTFE was a rubber like material. However, according to the Applicant, the Examiner's assertion was made "without any support," and "[this] disclosure is simply not present in either of the references."
The Examiner's Answer maintained the rejections. With respect to dependent claim 6, the Examiner noted that the Applicant's specification had no description of term "rubber like material". The Examiner then asserted that "PTFE is a flexible, stretchable material and is considered to be 'rubber like'."
The Applicant filed a Reply Brief to respond to this new information.
A person of ordinary skill in the art would understand the term "rubber like material" to have its common ordinary meaning. Merriam Websters 10th ed. defines rubber-like as "resembling rubber esp. in physical properties." The Examiner has not shown that any of the materials upon which he relies are rubber-like.The Board affirmed the rejection of dependent claim 6:
The Examiner made a reasonable finding that PTFE is a rubber like material (Ans.6). Having done so, Appellants have the burden of showing that it is not. In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (“[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.”). Appellants provide no evidence to establish that PTFE would not have been considered a rubber like material to a person of ordinary skill in the art.My two cents: The Board got this one wrong. Certainly in the Final rejection, the Examiner's "finding" was nothing more than a naked assertion. In the Answer, the Examiner provided a little more explanation of his thinking, which amounted to a claim construction for rubber-like ("flexible, stretchable") and a naked assertion that PTFE was flexible and stretchable.
So, there are actually two issues going to the PTAB: was the claim construction reasonable; and if so, did the Examiner provide enough technical reasoning to support his determination that PTFE possessed these characteristics.
The Applicant gave his own definition of "rubber-like" in the Appeal Brief – but not a particularly helpful one. The Applicant could have gone farther and gone on record with what those properties were. Sometimes the best way to beat the Examiner's unreasonable interpretation is to offer a reasonable one.
But let's assume that "rubber-like" is properly understood as "flexible, stretchable." The Board characterized this as a burden-shifting issue, stating the Examiner's assertions about the properties of Teflon® were enough to shift the burden to the Applicant.Yet the MPEP requires the Examiner to "provide a basis in fact and/or technical reasoning to reasonably support the determination [of an inherent characteristic]." (MPEP 2112.IV.) No such reasoning appears in the record.
If the Examiner had made the bare assertion that Teflon was "slippery" or "low-friction," I doubt I'd be blogging about this case. Sure, you could make arguments about burden shifting, no evidence, bare assertion, etc. But the truth is, once you know that the material in question is Teflon®, you also know it's slippery. That's probably common knowlege, worthy of Official Notice.
But the Examiner made the much more questionable statement that PTFE was "flexible, stretchable". That's not my everday experience with the Teflon® coating on my pan. And the Wikpedia article I read on the subject didn't mention these properties. So I say that before the burden shifts to the Applicant, the Examiner must provide a better explanation of exactly why a POSITA would consider Teflon® to be flexible and/or stretchable.
That said, I'm not sure I would appeal on the buden shifting issue alone. Instead, I'd consider putting my own evidence in the record about the properties of Teflon®. Probably not as far as an expert testifying that Teflon® was not flexible and/or stretchable. But how about some information about Teflon® from a materials science encylopedia, and then an argument that the evidence did not describe the material as having these properties?