Ex Parte Denison

Board of Patent Appeals and Interferences

Jan 19, 2010

10158362 (B.P.A.I. Jan. 19, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ANDY E. DENISON
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Appeal 2009-004110
Application 10/158,362
Technology Center 3700
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Decided: January 19, 2010
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Before: WILLIAM F. PATE III, JOHN C. KERINS and
STEVEN D.A. MCCARTHY, Administrative Patent Judges.

PATE III, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims
1-26, 51-54 and 56-63. App. Br. 3. We have jurisdiction under 35 U.S.C.
§ 6(b).
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The claims are directed to a longitudinally flexible stent for
implanting in a body lumen and the method of making such a stent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:

1. A longitudinally flexible stent for implanting in a body
lumen and expandable from a contracted condition to an
expanded condition, comprising:
a plurality of adjacent cylindrical elements, each
cylindrical element having a circumference extending about a
longitudinal stent axis and being substantially independently
expandable in the radial direction;
wherein the plurality of adjacent cylindrical elements are
arranged in alignment along the longitudinal stent axis and form
a generally serpentine wave pattern transverse to the
longitudinal axis and each cylindrical element has a plurality of
alternating valley portions and peak portions, the valley
portions including alternating double-curved portions and Y-
shaped portions, and the peak portions including alternating,
inverted double-curved portions and inverted Y-shaped
portions; and
a plurality of interconnecting members extending
between the adjacent cylindrical elements and connecting the
adjacent cylindrical elements to one another, interconnecting
members being connected to the alternating double-curved
portions to connect a cylindrical element to the Y-shaped
portion of an adjacent cylindrical element, and interconnecting
members being connected to the alternating, inverted double-
curved portion to connect a cylindrical element to the
alternating, inverted Y-shaped portion of an adjacent cylindrical
element.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Berry WO 99/15108 Apr. 1, 1999

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Claims 1, 4, 5, 8-21, 23-26, 51-54, 56-60, 62 and 63 stand rejected
under 35 U.S.C. § 102(b) as being anticipated or in the alternative, under
35 U.S.C. § 103(a) as being unpatentable over Berry. Ans. 3.
Claims 2, 3, 6, 7, 22 and 61 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Berry. Ans. 4.

OPINION
The disputed claim limitation in this appeal, appearing in each of
independent claims 1, 51 and 57, requires “valley portions including
alternating double-curved portions and Y-shaped portions, and [] peak
portions including alternating, inverted double-curved portions and inverted
Y-shaped portions.” The Examiner identifies the “double-curved portion[]”
in the Berry reference as “a portion of the longitudinally extending member
on top of the W, but not a portion of the longitudinally extending member on
the bottom of the W.” Ans. 7. The Examiner identifies the “Y-shaped
portion[]” as “a portion of the longitudinally extending member on the
bottom of the Y, but not a portion of the longitudinally extending member
on the top of the Y.” Ans. 7. Appellant contends that this interpretation is
unreasonable because “the Examiner’s position requires the viewer to first
visualize one shape and then completely disregard portions of that shape in
order to visualize a second, distinctive shape.” Appellant contends the
claims instead require “[c]omplete and distinct structural shapes depicting
both the double-curved shape and Y-shape.” App. Br. 12; Reply Br 7.
A determination of anticipation, as well as obviousness, involves two
steps. First is construing the claim, a question of law, followed by, in the
case of anticipation or obviousness, a comparison of the construed claim to
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the prior art. This comparison process involves fact-finding. Key
Pharmaceuticals v. Hercon Labs. Corp., 161 F.3d 709, 714 (Fed. Cir. 1998)
(citations omitted). “[T]he PTO applies to the verbiage of the proposed
claims the broadest reasonable meaning of the words in their ordinary usage
as they would be understood by one of ordinary skill in the art, taking into
account whatever enlightenment by way of definitions or otherwise that may
be afforded by the written description contained in applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997). The
ordinary and customary meaning of a claim term is the meaning that the
term would have to a person of ordinary skill in the art in question at the
time of the invention. Phillips v. AWH Corp., 415 F.3d 1303, 1319 (Fed. Cir.
2005) (en banc).
A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference. Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628,
631 (Fed. Cir. 1987).
The Examiner bears the initial burden of factually supporting any
prima facie conclusion of obviousness. The key to supporting any prima
facie conclusion of obviousness under 35 U.S.C. § 103 is the clear
articulation of the reason(s) why the claimed invention would have been
obvious. The Court in KSR International Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007) noted that the analysis supporting a rejection under 35 U.S.C.
§ 103 should be made explicit. The Federal Circuit has stated that
“rejections on obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with some
rational underpinning to support the legal conclusion of obviousness.” In re
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Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR, 550
U.S. at 418.
Initially we note that it is not reasonable to rely on the same structure
depicted at the interconnection of Berry’s stent segments to meet both of the
limitations requiring a “double-curved shaped portion” and a “Y-shaped
portion.” Berry fig. 23; Ans. Appendix. See e.g. Lantech, Inc. v. Keip
Machine Co., 32 F.3d 542 (Fed. Cir. 1994)(in infringement context, a single
conveyor held to not meet claim element requiring at least two conveyors);
In re Robertson, 169 F.3d 743 (Fed. Cir. 1999)(claim requiring three
separate means not anticipated by structure containing two means where one
of the two means was argued to meet two of the three claimed means).
Instead, the Examiner contends that “the structure which the examiner has
identified as the double curved portion is not identical to the structure
identified as the Y-shaped portion.” Ans. 7. However, that “structure”
identified by the Examiner results only from an arbitrary delineation of
Berry’s structure, made in order to meet the claim limitations. Even giving
the claims their broadest reasonable interpretation, one of ordinary skill in
the art would not have understood the claim terms requiring “double-curved
portions” and “Y-shaped portions” to include the arbitrary portions of Berry
defined only by the Examiner.
Since in finding a lack of novelty the Examiner relied upon an
unreasonable interpretation of the claims, the rejection of claims 1, 4, 5, 8-
21, 23-26, 51-54, 56-60, 62 and 63 as being anticipated by Berry cannot be
sustained. The Examiner’s rationale for concluding that, in the alternative,
the subject matter of these claims would have been obvious over Berry does
not correct the erroneous claim construction. Ans. 3-4. Accordingly, the
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rejection of these claims, along with dependent claims 2, 3, 6, 7, 22 and 61
as being unpatentable over Berry also cannot be sustained.

DECISION
For the above reasons, the Examiner’s rejections of claims 1-26, 51-
54 and 56-63 are reversed.

REVERSED

Vsh

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