The application relates to a dual balloon catheter. The Applicant made amendments following a Final Action as to novelty. The amendments were supported by the application, but not previously found in any claim, and thus, required a new search. The application was referred to the Patent Appeal Board on the basis of obviousness, resulting from this new search. The Applicants argued that the Commissioner had no jurisdiction to identify any defects which may arise from the response to the Final Action. The Commissioner of Patents disagreed. Furthermore, the rejection as to obviousness was upheld and amendments were required based on certain dependant claims.
The Patent Appeal Board (PAB) held that this situation was distinguishable from previous jurisprudence as the issue of obviousness arose because of amendments made in response to a Final Action and not after a Commissioner’s decision. The Patent Office has no control over the content of amendments submitted in response to a Final Action. Furthermore, the PAB held that it could not have been intended that claims be allowed without their patentability being considered, simply because they were presented to the patent office for the first time after a Final Action. In addition, the Applicant had an opportunity to respond to this issue prior to the hearing before the PAB.
The Applicant did not raise any substantive arguments regarding the obviousness rejection. The PAB considered obviousness in accordance with the Sanofi principles and rejected the claims.