BOSTON SCIENTIFIC SCIMED, INC.

Patent Trials and Appeals Board

May 28, 2021

2020006773 (P.T.A.B. May. 28, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
15/842,503 12/14/2017 Amr Salahieh 2001.1552108 9667
11050 7590 05/28/2021
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
EXAMINER
PRONE, CHRISTOPHER D
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
05/28/2021 ELECTRONIC
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte AMR SALAHIEH, BRIAN D. BRANDT,
DWIGHT P. MOREJOHN, ULRICH R. HAUG,
JEAN-PIERRE DUERI, HANS F. VALENCIA, and
ROBERT A. GESHLIDER
____________

Appeal 2020-006773
Application 15/842,503
Technology Center 3700
____________

Before BIBHU R. MOHANTY, NINA L. MEDLOCK, and
ROBERT J. SILVERMAN, Administrative Patent Judges.

MOHANTY, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–18. We have jurisdiction under
35 U.S.C. § 6(b).

SUMMARY OF THE DECISION

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as Boston Scientific
Scimed, Inc. (Appeal Br. 3).
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We AFFIRM.
CLAIMED SUBJECT MATTER
The Appellant’s claimed invention relates to an apparatus for
replacing a heart valve with a replacement valve using an expandable and
retrievable anchor (Spec. para. 2). Claim 1, reproduced below, is
representative of the subject matter on appeal.

1. A repositionable prosthetic heart valve, comprising:
a single expandable tubular stent having an elongated
configuration, an expanded configuration, and a repositionable
configuration;
wherein the expandable tubular stent is designed to shift
between the elongated configuration and the expanded
configuration without an intervention of a pressurized balloon;
wherein the expandable tubular stent is designed to shift
between the expanded configuration and the repositionable
configuration so that the stent can be repositioned after being
expanded;
wherein the expandable tubular stent is designed to shift
between the elongated configuration and the repositionable
configuration; and
a plurality of leaflets coupled to the expandable tubular
stent.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 1–3, 5–13, and 15–18 are rejected under 35 U.S.C.
§ 102(b) as anticipated by Leonhardt (US 5,957,949; iss. Sept. 28, 1999).
2. Claims 4 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Leonhardt and Ashworth (US 2003/0130746 A1; pub.
July 10, 2003).
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FINDINGS OF FACT
We have determined that the findings of fact in the Analysis section
below are supported at least by a preponderance of the evidence.2

ANALYSIS
The Appellant argues that the rejection of claim 1 under 35 U.S.C.
§ 102(b) as anticipated by Leonhardt is improper because the prior art fails
to disclose a “single stent” as would be interpreted by one of ordinary skill
in the art in light of the Specification (Appeal Br. 8).
In contrast, the Examiner has determined that the rejection of record is
proper (Final Act. 4, 5, Ans. 3–7).
We agree with the Examiner. We first construe the meaning of the
word “single stent” as used by the Appellant in the claims. We determine
the scope of the claims in patent applications “not solely on the basis of the
claim language, but upon giving claims their broadest reasonable
construction ‘in light of the specification as it would be interpreted by one of
ordinary skill in the art.’” Phillips v. AWH Corp., 415 F.3d 1303, 1316
(Fed. Cir. 2005) (en banc) (quoting In re Am. Acad. of Sci. Tech Ctr.,
367 F.3d 1359, 1364 (Fed. Cir. 2004)). Here, the Appellant fails to cite to
any portion of the Specification that would limit the term “single stent” to
exclude multiple components from forming a “single” finished unit for the

2 See Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427 (Fed. Cir. 1988)
(explaining the general evidentiary standard for proceedings before the
Patent Office).
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stent. Despite the Appellant’s arguments, in the Appellant’s Specification at
pages 7–10 the anchor 30 itself includes tubes (60), wires (50), and male and
female interlocking units (44, 42) and is thus formed from multiple
components. Thus, one of ordinary skill in the art would not construe the
term “single” to exclude a unitary component made from multiple
components that were assembled together to form the device in light of the
Appellant’s Specification.
Here, Leonhardt discloses a single stent (26) formed from multiple
components put together to from the stent. Leonhardt at column 4, lines 14–
16 even specifically states that the “valve stent 20 [is] comprised of three
elements,” thus calling the device a “stent” in the manner claimed. In
Leonhardt at Figure 1A the single valve stent 26 is comprised of the short
extensions (58, 58) assembled with the connecting bar 29 together to form
the device. In Leonhardt at Figure 4 the assembled components together
form the “single stent” 26 under a broadest reasonable interpretation in light
of the Appellant’s Specification.
The Appellant at page 11 of the Appeal Brief also argues that the cited
prior art fails to disclose that “the expandable tubular stent is designed to
shift between the expanded configuration and the repositionable
configuration so that the stent can be repositioned after being expanded.”
Here, the stent 26 of Leonhardt is physically capable of being “repositioned
after being expanded” as the device could be moved physically in the heart
valve meeting the cited claim limitation.
Accordingly, for the reasons above, the rejection of claim 1 under
35 U.S.C. § 102(b) as anticipated by Leonhardt is sustained. The same
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arguments have been presented for claims 2, 3, 5–13, and 15–18 and the
rejection of these claims is also sustained as not separately argued.
The Appellant has provided the same arguments for the rejection of
claims 4 and 14 under 35 U.S.C. § 103(a) as unpatentable over Leonhardt
and Ashworth and the rejection of these claims is sustained for the same
reasons given above.
CONCLUSIONS OF LAW
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 1–3, 5–13, and 15–18 under 35 U.S.C. § 102(b) as
anticipated by Leonhardt
We conclude that Appellant has not shown that the Examiner erred in
rejecting claims 4 and 14 under 35 U.S.C. § 103(a) as unpatentable over
Leonhardt and Ashworth.
DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–13,
15–18
102(b) Leonhardt 1–3, 5–13,
15–18

4, 14 103(a) Leonhardt,
Ashworth
4, 14
Overall
Outcome
1–18

TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2019).

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AFFIRMED