In re Dance, No. 97-1229, 1998 U.S. App. LEXIS 27993 (Fed. Cir. Oct. 30, 1998).




Whether the Board of Patent Appeals and Interferences ("the Board") erred in its determination that claims 33 and 35-37 of U.S. Patent application Serial No. 08/162,572, entitled "Vascular Occlusion Removal Devices and Methods" (the "Dance" application) are obvious over Kensey, U.S. Patent No. 4,747,821, in view of Sullivan, U.S. Patent No. 4,950,238.


No. Claims 33 and 35-37 are unpatentable on the grounds of obviousness.


The Dance patent application and Kensey and Sullivan patents are catheter devices for removing obstructions such as a thrombus in a blood vessel. The Kensey patent describes all but one of the elements in the Dance patent application's independent claim 33. The element not covered by the Kensey patent is the "means for recovering fluid and debris." Dance at para 2. However, the Sullivan patent, covering a similar device, does disclose such a means for recovering fluid and debris. The examiner concluded that "[i]t would have been obvious to one of ordinary skill in the art to have modified the device of Kensey et al. with a fluid recovery means such as that disclosed by Sullivan[.]" Dance at para 6.

Dance argued that the combining of prior art references of different patents by the Board was incorrect and that the standard should be "whether the prior art suggested making the Dance catheter." Dance at para. 11. The Federal Circuit pointed out that since the Kensey and Sullivan inventions (while somewhat different in detail) are in the same narrow field as applicant's invention, their knowledge may be presumed by someone of ordinary skill in the art. "The teachings of the references, their relatedness to the field of the applicants endeavor . . . are all relevant considerations for obviousness." Dance at para 10. Here, the Kensey patent does not teach away from the addition of Sullivan's means for recovering fluid and debris.

Dance also asserted that the examiner and the Board erred in finding that Kensey discloses or renders obvious the "bulbous" head of claims 33 and 35-37. However, because a patent examiner is obliged to give a claim its broadest reasonable interpretation in view of the specification and prosecution history, and because the described shapes of Kensey's heads fall within a broad reasonable interpretation of "bulbous," no significant distinction is found from the rounded or conical heads of Kensey.

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