Ex Parte Addonizio et alDownload PDFPatent Trial and Appeal BoardSep 29, 201612178895 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/178,895 07/24/2008 31292 7590 10/03/2016 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. 1019-7CON5 7177 EXAMINER WOZNICKI, JACQUELINE ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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 Appeal2015-001160 Application 12/178,895 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 1-3, 5, 6, 12-17, 20-23, and 27-37. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. Appeal2015-001160 Application 12/178,895 CLAIMED SUBJECT MATTER The claims are directed to "stents having helical elements and to methods for manufacturing the stents of the present invention." Spec. i-f 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An expandable stent having an unexpanded state, the unexpanded state comprising: a plurality of axially-spaced non-helical rings circumscribing a cylindrical axis, each ring having a plurality of expandable circumferential elements connected to each other by substantially S-shaped segments, each S-shaped segment defining at least three generally linear portions nonparallel with respect to the cylindrical axis; wherein each circumferential element includes a plurality oflinear portions that are nonparallel with respect to the three generally linear portions of each S- shaped segment; a plurality of first expandable helical segments consisting of a plurality of the expandable circumferential elements alternating with a plurality of connecting elements; and a plurality of second expandable helical segments consisting of a plurality of the substantially S-shaped segments alternating with the connecting elements. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Fischell Brown US 5,697,971 Dec. 16, 1997 US 2003/0083736 Al May 1, 2003 REJECTION Claims 1-3, 5, 6, 12-17, 20-23, and 27-37 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Fischell. Ans. 4. 2 Appeal2015-001160 Application 12/178,895 OPINION The Appellants present one dispositive issue, among others, namely whether the Examiner has properly construed the term "linear" as used in the claims. App. Br. 6. The Examiner has chosen the broadest of definitions of the term "linear" available via Merriam-Webster and states that linear is properly construed as "'a line' ('a long narrow mark on a surface' or 'an area or border that separates two places', 'a straight or curved geometric element')." Ans. 19. The Examiner goes on to assert that "'linear' is not interpreted as being 'straight' as they [Appellants] are urging, and that if such a special definition is desired it should be defined as such." Id. While the Appellants do argue for a different choice of definition, from the same dictionary source, that would include the interpretation of "straight" we see no initial reason to choose the narrower definition over the broader definition as presented by the Examiner. Upon closer examination of the Specification, however, as pointed out by the Appellants (Reply Br. 2), while not explicitly defining "linear" to mean "straight," the Specification does juxtapose "linear" with "curved" in describing elements 412 and 414 of Figure 6, respectively. See Spec. i-f 34. Figure 6 depicts element 412 as straight/linear, while element 414 is curved. The Examiner makes the conclusory statement that the definition is not "inconsistent with the specification," but provides no further explanation and does not address the Appellants' arguments to the contrary. Ans. 19. Accordingly, we are persuaded that the term "linear" as used in the Specification cannot refer to a curved element such as that used by the Examiner in the rejection. As such, we agree with the Appellants that the alternative definition of "of, relating 3 Appeal2015-001160 Application 12/178,895 to, resembling, or having a graph that is a line and especially a straight line" is the proper construction of "linear." Reply Br. 2-3. Because the rejection of all claims relies on the aforementioned improperly broad definition in order to use a curved portion of Brown to meet the "linear" claim element at issue, we do not sustain the Examiner's rejection. DECISION The Examiner's rejection of claims 1-3, 5, 6, 12-17, 20-23, and 27- 37 is REVERSED. REVERSED 4 Copy with citationCopy as parenthetical citation