PTO Board Reverses Rejection of Artemis Medical Claims

Scott Daniels | October 18, 2010

The PTO’s Central Reexamination Unit (CRU) has been criticized recently for construing claims too broadly, according to the “broadest reasonable construction” standard.  Justice was done, however, in the Board’s decision Friday, Ex parte Artemis Medical, reversing the examiner’s rejection of the claims of U.S. Patent No. 6,730,042.

The ‘042 patent claimed a “target tissue localization device” for marking a biopsy cavity.  The claims included the limitation of a bioresorbable body “comprising polylactic acid and polyglycolic acid.”

The examiner construed the claim as covering not only embodiments in which the bioresorbable body has both polylactic acid and polyglycolic acid, but also embodiments in which bioresorbable body has only polylactic acid and embodiments in which it has only polyglycolic acid.  The examiner justified this broad construction on correspondingly broad disclosure in the ‘042 specification that the bioresorbable body could be “one or more” members of a list of materials.  The examiner then rejected the claims as being obvious over a prior art reference, as well as being obvious over a combination of prior art references.

In a short, crisp opinion, the Board reversed the rejection, finding that the claims unmistakably required both polylactic acid and polyglycolic acid, and noting that the patentee was free to write claims more narrow in scope than the specification.

The examiner also argued that even with a narrow construction of the bioresorbable body limitation, the claims were obvious over her primary reference that teaches “the use of polylactic and glycolide and generally teaches use of a physiologically acceptable biodegradable polymer.”  The Board disagreed, stating that the reference “merely discloses ‘a polymer or copolymer of one or more of lactic acid, lactide, glycolide, and glutamic acid’ not both polylactic acid and polyglycolic acid as recited in the claims” (emphasis added). Further, the Board chided the examiner for failing to articulate sufficient reason for one skilled in the art to use both polylactic acid and polyglycolic acid.

It is perhaps this analysis by the Board of the prior art reference – that the disclosure of a list of “one or more” members does not necessarily suggest a specific combination of two of those members – that practitioners may find most useful.

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