Ex Parte Addonizio et al

Patent Trial and Appeal Board

Aug 30, 2016

12178889 (P.T.A.B. Aug. 30, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/178,889 07/24/2008
31292 7590 09/01/2016
CHRISTOPHER & WEISBERG, P.A.
200 EAST LAS OLAS BOULEVARD
SUITE 2040
FORT LAUDERDALE, FL 33301
FIRST NAMED INVENTOR
Scott J. ADDONIZIO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1019-7CON4 7168
EXAMINER
WOZNICKI, JACQUELINE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
09/01/2016 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):
ptomail@cwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT J. ADDONIZIO, DAVID L. CAMP, JR.,
GARY J. BECKER, and JOHN D. PAZIENZA
Appeal2013-010829
Application 12/178,889
Technology Center 3700
Before JENNIFER D. BAHR, BRETT C. MARTIN, and
LEE L. STEPINA, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from a rejection of
claims 1-7, 10, 11, 13-19, and 21-23. We have jurisdiction under 35 U.S.C.
§ 6(b ).
We reverse.
Appeal2013-010829
Application 12/178,889
CLAIMED SUBJECT MATTER
The claims are "directed to expandable stents that have relatively
uniform stent-to-vessel ratios when expanded and other desirable properties,
as well as methods for making these stents." Spec. i-f 6. Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. An expandable stent having an unexpanded state, the
unexpanded stent comprising:
a plurality of adjacent non-helical cylindrical rings
circumscribing a cylindrical axis, at least two of the cylindrical
rings being connected by a substantially capital H-shaped
segment defining two generally parallel linear portions, the linear
portions defining an angle greater than 0 degrees with respect to
the cylindrical axis; and wherein each cylindrical ring includes a
first circumferential segment connected to the H-shaped segment
and a second circumferential segment connected to the H-shaped
segment, the first circumferential segment having a different
rotational orientation than the second circumferential segment.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lindenberg us 5,716,393 Feb. 10, 1998
REJECTIONS
Claims 1-7, 10, 11, 13-19, and 21-23 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Lindenberg. Ans. 3. 1
1 A rejection of claims 1---6, 10, 11, 13-19, and 21-23 under 35 U.S.C. §
102(a) as anticipated by Von Oepen (WO 98/35634 Al, published Aug. 20,
1998) and a rejection of claim 7 under 35 U.S.C. 103(a) as unpatentable over
Von Oepen has been withdrawn by the Examiner. Ans. 9; see also Final
Act. 5-12.
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Appeal2013-010829
Application 12/178,889
OPINION
The main dispute relating to the Examiner's rejection is whether
Lindenberg teaches the "substantially capital H-shaped segment defining
two generally parallel linear portions" recited in claim 1 and the similar
language in claim 16, the sole independent claims. According to the
Examiner, Lindenberg teaches this recitation as depicted below:
FIG~ 1
I•">':'::••,
_,.(\
The above drawing is the Examiner's annotated version of Lindenberg's
Figure 1 showing the various elements of claim 1. Ans. 3.
The Appellants argue that the Examiner is incorrect because
Lindberg's segment is not H-shaped, but that "the Lindenberg reference
clearly illustrates a connection between two curved peaks" (Reply Br. 3) as
is shown below:
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Appeal2013-010829
Application 12/178,889
The above drawing depicts Appellants' unannotated version of Lindenberg' s
Figure 1 shown next to the Examiner's annotated version. Appellants go on
to argue that "the ability to draw an 'H' in the space within the Lindenberg
stent is not the same as showing a 'substantially capital-H shaped segment."
Id. We agree with the Appellants that the Examiner has merely drawn in a
misshapen "H" within the stent without really following the true contour of
Lindenberg' s stent. The connector in Lindenberg is located at a curved peak
with the stent portions continuing in an axial direction and makes more of an
X-shape than the H-shape required by the claims.
As depicted in Appellants' drawings, the H-shape intended by the
claims sits not at a peak, but between two straight portions of the stent where
the straight portions represent the legs of the H as depicted below:
250
The above-referenced drawing is a portion of Appellants' Figure 3 showing
H-shaped portion 250, which we note also is at least somewhat misshapen
when compared to an actual H. While the Examiner has drawn a generally
H-shaped figure within Lindenberg's stent, we do not agree that what the
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Appeal2013-010829
Application 12/178,889
Examiner has drawn properly follows the actual shape of Lindenberg's stent
and conclude that the actual shape in Lindberg cannot be considered
"substantially H-shaped" as required by the claims.
This disagreement between the Examiner and the Appellants, and the
fact that Appellants' connector is also a misshapen H, raises a question not
before us in the current appeal. While we agree that Lindenberg fails to
meet the claims, given the terms "generally" and "substantially," it would
appear difficult, if the art were closer, for one of ordinary skill in the art to
determine what exactly is or is not a "substantially capital H-shaped segment
defining two generally parallel linear portions."
In Appeal 2014-000229, this panel determined that a different prior
art reference, Brown (US 2003/0083736 Al) met the limitation of
"substantially capital H-shaped" while not looking as much like an H as
Appellants' connector (but more so than the prior art in the present appeal).
In discussing our interpretation above, we note that the Appellants' drawings
depict the H-shaped connector as sitting between two substantially straight
portions of a stent, while the connector in Lindenberg is directly at a curved,
undulation peak as argued by the Appellants. In the '229 Appeal, the Brown
connector was not directly at the undulation peak, but was just past the peak,
which still allowed the Examiner to properly find the legs of the H.
DECISION
The Examiner's rejection of claims 1-7, 10, 11, 13-19, and 21-23 is
reversed.
REVERSED
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