Ex Parte Fontaine

Board of Patent Appeals and Interferences

Mar 30, 1999

07929150 (B.P.A.I. Mar. 30, 1999)

1 Application for patent filed August 13, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No.29
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte ARTHUR B. FONTAINE
__________
Appeal No. 96-0211
Application 07/929,1501
___________
ON BRIEF
___________
Before OWENS, CRAWFORD, and RUGGIERO, Administrative Patent
Judges.
OWENS, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the examiner’s final rejection of the
following design claim:
I CLAIM the ornamental design for AN IMPLANTABLE
INTRAVASCULAR STENT as shown and described.
Appeal No. 96-0211
Application 07/929,150
2 Although the examiner’s answer does not so state, it
appears from the discussion in the answer that in the rejection
over Palmaz alone, the examiner also relies upon Figs. 1A and 1B
of that reference.
2
THE REFERENCES
Palmaz 4,733,665 Mar. 29, 1988
Wiktor 5,133,732 Jul. 28, 1992
THE REJECTIONS
The claim stands rejected under 35 U.S.C. § 103 as being
unpatentable over Palmaz, and also over Palmaz (Figs. 1A and 1B)
in view of Wiktor.2
OPINION
We have carefully considered all of the arguments advanced
by appellant and the examiner and agree with appellant that the
aforementioned rejection is not well founded. Accordingly, we do
not sustain this rejection.
The ultimate inquiry when obviousness of a design is
considered under 35 U.S.C. § 103 is whether the design would have
been obvious to a designer of ordinary skill who designs articles
of the type involved. See Durling v. Spectrum Furniture Co., 101
F.3d 100, 103, 40 USPQ2d 1788, 1790 (Fed. Cir. 1996). For a
design to be unpatentable because of obviousness, there must be a
reference which shows "something in existence, the design
Appeal No. 96-0211
Application 07/929,150
3
characteristics of which are basically the same as the claimed
design". In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA
1982). If this primary reference alone is not sufficient for
rendering obvious the claimed design, then design elements from
secondary references may be considered, provided that the
references are related such that the appearance of ornamental
features of the secondary references would have suggested
applying those features to the primary reference. See In re
Borden, 90 F.3d 1570, 1574-75, 39 USPQ2d 1524, 1526-27 (Fed. Cir.
1996). For a design to be unpatentable as being obvious, the
design in the primary reference, or the design produced by
modifying the primary reference in view of the secondary
references, must have the same overall appearance, or visual
effect as a whole, as the claimed design. See In re Harvey, 12
F.3d 1061, 1063, 29 USPQ2d 1206, 1208 (Fed. Cir. 1993).
The similarities and differences between Palmaz’s design and
that of appellant are well stated by appellant (brief, pages 6-
8):
Applicant’s stent, like Palmaz, has a number of cells
formed by a wire frame construction. Unlike Palmaz,
however, Applicant’s cells are arranged in a single spiral
configuration, much like a barber pole. The cells of Palmaz
are disposed in multiple rings, with each ring being
vertically offset with respect to the previous row. The
shape of the cells in Applicant’s stent are remarkably
different in appearance compared to the shape of the cells
in Palmaz. Applicant’s cells are curvilinear and
asymmetrical whereas the Palmaz cells are regular, linear
Appeal No. 96-0211
Application 07/929,150
4
and symmetrical. The asymmetrical nature of Applicant’s
stent results from the spiral nature of the cell pattern.
Furthermore, the intersection of the wires forming the cells
in Applicant’s stent is smooth and continuous whereas the
wires forming the stent in Palmaz overlap to form a sharp,
pointed and angular appearance. The walls of Applicant’s
stent are of single wire thickness whereas at least the
overlapping points in the Palmaz construction are of two
wire thicknesses.
. . .
. . . In summary, Applicant’s stent has an ornamental
appearance of a single continuous, half-round wire in a
curvilinear waveform pattern spirally wound into a
tubular shape with the troughs and peaks of vertically
adjacent waveforms connected in the same plane to form
a spiral series of curvilinear asymmetric rhomboid
cells. On the other hand, the Palmaz design has an
overall appearance of multiple offset rows of
symmetric, repetitive diamond-shaped cells formed by
two parallel sets of multiple wires which are oriented
at an acute angle to each other.
. . .
Applicant’s stent and Palmaz’s graft are similar
to the extent that they both have wire frames which
form a cylindrical tube.
The above-noted differences in the appearances of the
designs of Palmaz and appellant are not minute as argued by the
examiner (answer, pages 3, 4 and 7).
The examiner argues that the designs of both Palmaz and
appellant have the overall appearance of a tubular-shaped stent
which has numerous rhomboid cells in a repetitive pattern which
are formed of wire (answer, page 7). This argument is deficient
in that the examiner does not address the many differences in the
Appeal No. 96-0211
Application 07/929,150
5
appearances of appellant’s stent and Palmaz’s graft pointed out
by appellant, as set forth above. The examiner improperly
focuses on the design concept of a stent which is made of wire,
has a tubular shape, and has numerous rhomboid cells in a
repetitive pattern, rather than considering the overall
appearance, or visual effect as a whole, of the designs of
appellant and Palmaz. See Harvey, 12 F.3d at 1064, 29 USPQ2d at
1208.
Because of above-noted differences between appellant’s stent
and Palmaz’s graft, appellant’s stent and Palmaz’s graft do not
have design characteristics which are basically the same. Thus,
Palmaz is not suitable as a primary reference. See Rosen, 673
F.2d at 391, 213 USPQ at 350. We therefore do not sustain the
rejection over Palmaz. Also, because Palmaz is not suitable as a
primary reference, and because the examiner has not argued, and
it does not appear, that Wiktor is suitable as a primary
reference, we do not sustain the rejection over Palmaz and
Wiktor. See id.
Appeal No. 96-0211
Application 07/929,150
6
DECISION
The rejections of appellant’s design claim under 35 U.S.C.
§ 103 over Palmaz, and over Palmaz in view of Wiktor, are
reversed.
REVERSED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MURRIEL E. CRAWFORD )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOSEPH F. RUGGIERO )
Administrative Patent Judge )
TJO/pgg
Appeal No. 96-0211
Application 07/929,150
7
Richard J. Godlewski
P.O. Box 2256
West Lafayette, IN 47906