BPAI Uses Dictionary and Patentee's Explicit Distinguishing of Prior Art in Defining Claim Term and Reversing Rejection of Claims
Ex parte Westlund (BPAI Nov. 4, 2009)
The Board of Patent Appeals and Interferences ("BPAI"), in an opinion by Administrative Patent Judge Lebovitz, reversed a rejection of claims relating to medical electrical leads and methods of fabricating and implementing them. These leads can be used with cardiac stimulators for treating patients with cardiac rhythmic dysfunction. At issue on appeal was whether the Examiner had erred in interpreting the claims to read on electrical leads described in a specific prior art reference.
The claims at issue comprised electrical leads with "one or more longitudinally extending cavities defining a plurality of lumens formed within the materials of the unitary lead body." The claims also required that "essentially no material that forms the unitary lead body disposed between at least some of the plurality of lumens."
The examiner had found that a specific prior art reference had disclosed the claimed leads because "[c]learly, the tubes [of the prior art reference] are formed within the material since they are completely enclosed inside the material of the lead body … [and] [w]hile the lumens are not formed through the material of the lead body, or defined by the material of the lead body, this is not required by the claim."
The BPAI disagreed, focusing its analysis on the claim term "unitary lead body." It found that the patent specification "explicitly distinguished its 'unitary lead body' construction from conventional leads with an outer sheath tubing, the same type of lead which is embodied in Figure 8 of [the prior art reference]." The BPAI further cited to a general purpose dictionary for a definition of "unitary" as "indivisible" or "whole." Ultimately, the BPAI that a person of ordinary skill in the art, upon reading the patent specification, would have understood "that the [claimed] lumens are formed from the material of the unitary lead body and are indivisible from it, rather than being separate lumens as in the [prior art] device." As such, the prior art reference did not disclose all of the elements recited in the claim and the claim rejection was reversed.
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