STATEMENT OF THE CASE

(Reprinted from Opinion of the Board)

Eric Dahlinger (Appellant) appeals under 35 U.S.C. § 134 (2002 from the Examiner's decision rejecting claims 1, 2, 4, 5, 7, and 8 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement; claims 1-6 under 35 U.S.C. § 102(b) as being anticipated by Mikhail (US Pat. 5,624,395); claims 8 and 9 under 35 U.S.C. § 103(a) as being unpatentable over Mikhail. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002).

The Invention

Appellant's claimed invention is directed to a surgical device in the form of an access port or sleeve for passing surgical instruments into locations within the body. Spec. 1.

ISSUES

The dispositive issues presented in this appeal are:

1. Does Appellant's Specification provide support for the limitation in Appellant's claims that the malleable, constantly bulbous exterior region is "undeflatable," so as to satisfy the written description requirement of 35 U.S.C. § 112, first paragraph?

2. Did the Examiner err in finding that Mikhail's balloon 18 is "constantly bulbous" and "undeflatable" as called for in claims 1-7?

3. Did the Examiner err in finding that Berger's balloon 16 is "constantly bulbous" and "undeflatable," as called for in claims 8 and 9?

Discussion

Issue 1

The written description requirement found in the first paragraph of 35 U.S.C. § 112 is separate and distinct from the enablement requirement of that provision...

Accordingly, we find that the Appellant's Specification does not provide support for the limitation in Appellant's claims that the malleable, constantly bulbous exterior region is "undeflatable," so as to satisfy the written description requirement of 35 U.S.C. § 112, first paragraph.

We sustain the rejection of claims 1, 2, 4, 5, 7, and 8 under 35 U.S.C. § 112, first paragraph.  Pursuant to our authority under 37 C.F.R. § 41.50(b) (2010), we also enter a new ground of rejection of claims 3, 6, and 9, which depend from claims 1 and 8, and thus also contain the limitation that the malleable, constantly bulbous exterior region is "undeflatable," under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement.

Issue 2

The Examiner found that Mikhail shows a malleable, constantly bulbous exterior region (balloon 18) in an uninflated state in figure 2a. Ans. 8. The Examiner further found that because the balloon 18 is uninflated, it cannot be deflated, and thus is "undeflatable." Id. Appellant argues that Mikhail's balloon is neither "undeflatable" nor "constantly bulbous." App. Br. 20-21.

Figure 2a of Mikhail shows the balloon 18 connected to and molded unitarily with the proximal portion 16 of the catheter body 12 such that the balloon 18 extends in an inverted configuration, from which it is then folded until its distal end 46 contacts tapered neck 48 and seating region 50 of the catheter, with the distal end 46 adhered to the seating portion 50. Col. 10, 1. 57 to col. 11, ll. 10. Mikhail teaches that "the inflatable balloon 18 is initially formed with the intermediate segments 112 of the side walls slightly curved or bowed to minimize the inflation pressure initially required to induce inflation." Col. 18, ll. 60-63. The balloon may be retracted "to completely deflated and collapsed configuration" by drawing a vacuum. Col. 18, ll. 63-67. Thus, we find that Mikhail's balloon is "constantly bulbous," in that its rest state, in which it is not subjected to any external forces, it is slightly curved or bowed, that is, it has a bulbous (curved or bowed) shape. This passage, however, makes clear that Mikhail's balloon 18 is deflatable (i.e., capable of being collapsed or losing firmness through the escape of contained gas).

In light of the above, we do not agree with Appellant that the Examiner has erred in finding that Mikhail's balloon 18 is "constantly bulbous," as called for in claims 1-7.  We do agree with Appellant, however, that the Examiner has erred in finding that Mikhail's balloon 18 is "undeflatable," as called for in claims 1-7.

Accordingly, we reverse the rejection of claims 1-6 as being anticipated by Mikhail. In rejecting claim 7 as being unpatentable over Mikhail, the Examiner has not articulated any reason why it would have been obvious to modify Mikhail to render the balloon 18 "undeflatable." Rather, the rejection of claim 7 is fatally tainted by the Examiner's same flawed finding that Mikhail's balloon is "undeflatable." Thus, we reverse the rejection of claim 7 as well.

Issue 3

We reverse the rejection of claims 8 and 9 as being anticipated by Berger for essentially the same reasons as the rejections based on Mikhail. Specifically, while Berger's depiction of a bulbous balloon 16 in figure 1 leads us to find that the balloon is "constantly bulbous," the Examiner has not established that the balloon is "undeflatable" (i.e., incapable of losing firmness through the escape of contained gas), by, for example, drawing a vacuum on the balloon.

[The rejection was affirmed relative to the 112 rejection, the rejection was reversed relative to the 102 rejection, and a new 112 rejection was entered]