Ex Parte Gray et al

Patent Trial and Appeal Board

Jun 24, 2013

10791345 (P.T.A.B. Jun. 24, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte LARRY B. GRAY, ANN ECKERT,
TODD CHELAK, and ROBERT TUMARKIN
__________

Appeal 2012-000674
Application 10/791,345
Technology Center 3700
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal1 under 35 U.S.C. § 134(a) involves claims to a stent. The
Examiner rejected the claims for obviousness-type double patenting. The
Examiner also entered a rejection on alternative anticipation and/or
obviousness grounds.
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.

1 The real party in interest is Cordis Corporation (App. Br. 1).
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STATEMENT OF THE CASE
Claims 20-37 stand rejected and appealed (see App. Br. 2).2
Appellants have not argued the claims separately, so they stand or fall
together. See 37 C.F.R. § 41.37(c)(1)(vii). Claim 20 is representative and
reads as follows:
20. A stent having a longitudinal axis and first and second ends
with an intermediate section therebetween, the stent having an
unexpanded and expanded configuration, the stent having axial
flexibility in its unexpanded configuration and comprising:
a plurality of circumferential springs disposed adjacent one
another along the longitudinal axis,
each of said circumferential springs connected to an
immediately adjacent circumferential spring by a generally straight
connector member;
each of said circumferential springs comprising a plurality of
circumferentially spaced struts disposed generally along the
longitudinal axis, each of said struts having a first end portion and a
second end portion and a curved portion therebetween, said curved
portion generally placed along said longitudinal axis of the stent, said
first end portion being connected to a second end portion of a first
immediately adjacent strut, and said second end portion being
connected to a first end portion of a second immediately adjacent
strut.

The following rejections are before us for review:
(1) Claims 20 and 29, for nonstatutory obviousness-type double
patenting over claims 1 and 18 of U.S. Patent No. 5,895,406 and claims 1-6
of U.S. Patent No. 5,980,553 (Final Rejection 4 (entered September 29,
2010)); and

2 Appeal Brief entered April 18, 2011.
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(2) Claims 20-37 under 35 U.S.C. § 102(e) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Globerman3 (Ans. 4-
6).
Appellants have submitted a terminal disclaimer to overcome the
obviousness-type double patenting rejection (see App. Br. 5, 6). As
Appellants thus do not contest the merits of that rejection, we summarily
affirm it.
ANTICIPATION/OBVIOUSNESS
In rejecting claim 20, the Examiner provided an annotated version of
Figure 14 of Globerman, reproduced below:

According to the Examiner, the annotated Figure 14 shows

3 U.S. Patent No. 5,776,161 (filed Oct. 16, 1995).
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stent 30 comprising generally straight connector members 35
connecting circumferential springs or cylindrical rings 33.
Each of springs or rings 33 comprises circumferentially spaced
struts AB and CD. Each strut AB or CD has first end portion,
second end portion and a curved portion in between being
connected to a 1st and 2nd immediately adjacent struts
substantially as recited in the claims.

(Ans. 5.)
Appellants contend that the Examiner erred in finding that Globerman
anticipates claim 20 because the Examiner “oriented the stent in Globerman
incorrectly. For instance, the ‘ring’ of Figures 14- 15 is neither a
‘cylindrical ring’ nor a ‘cylindrical spring,’ as claimed. It does not lie along
the longitudinal axis, but rather lies orthogonal to the longitudinal axis”
(App. Br. 5 (emphasis added)).
Appellants contend that this deficiency is best seen “in reviewing
Figure 14 of Globerman or as in the markup provided by the Examiner in the
Final Office Action. As a result, the alleged ‘connectors’ (in Globerman) do
not connect ‘a ring’ or ‘a spring’ at any of the end portions of the struts of
Globerman” (id.).
Appellants contend that, “[s]imply put, in Globerman Figures 14-15,
there are NO rings or springs oriented as claimed. As a result, the properly
construed embodiment of Globerman does not anticipate or render obvious
Claims 20-37” (id.).
The Examiner responds that “the term ‘cylindrical’ (in the phrases,
such as ‘cylindrical ring’ or ‘cylindrical spring’) as recited in the above
arguments is not found anywhere in the claims” (Ans. 7). Moreover, the
Examiner argues, “wavy springs or rings 33 (Figure 14 of Globerman, for
example) extend in a circumferential direction perpendicular to the
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longitudinal axis of the stent” (id. at 8). Further, the Examiner contends,
“springs / rings 33 lie on a cylindrical surface of the stent, which cylindrical
surface is parallel to the longitudinal axis of the stent, as such, springs or
rings 33 are indeed disposed along the longitudinal axis of the stent as
recited in the claims” (id.).
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . .
After evidence or argument is submitted by the applicant
in response, patentability is determined on the totality of the
record, by a preponderance of evidence with due consideration
to persuasiveness of argument.

Appellants’ arguments do not persuade us that a preponderance of the
evidence fails to support the Examiner’s prima facie case of anticipation as
to claim 20.
As required by claim 20, Globerman’s stent includes a plurality of
rings 33 disposed adjacent to one another along the stent’s longitudinal axis,
the rings being connected by straight connector member 35 (see Globerman,
Fig. 14). The rings can reasonably be considered springs, given the fact that
they expand with sufficient force to act as a stent in a patient’s vasculature
(see id. at Fig. 15 (expanded form of stent shown in Fig. 14 (see id. at col. 4,
ll. 43-44))).
It may be true that Globerman’s connector members lie relatively
parallel to the longitudinal axis, in contrast to embodiments of Appellants’
strut, shown for example in Appellants’ Figure 4 and 6, which Appellants
cite to explain the claimed subject matter (see App. Br. 4). Claim 20,
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however, does not require the connector member to have any particular
orientation.
As our reviewing court has explained, “while ‘the specification
[should be used] to interpret the meaning of a claim,’ courts must not
‘import[ ] limitations from the specification into the claim.’ . . . [I]t is
improper to ‘confin[e] the claims to th[e] embodiments’ found in the
specification . . . .” In re Trans Texas Holdings Corp., 498 F.3d 1290, 1299
(Fed. Cir. 2007) (quoting Phillips, 415 F.3d at 1323 (citations omitted,
bracketed text in internal quotes in original).
Thus, “during patent prosecution when claims can be amended,
ambiguities should be recognized, scope and breadth of language explored,
and clarification imposed.” In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
Turning to claim 20’s strut elements, as shown in the Examiner’s
annotated Figure 14, each of Globerman’s springs 33 are composed of strut
elements AB and CD (Ans. 6). It may be true that, with respect to each
other, the end portions of those strut elements have similar locations relative
to the longitudinal axis of the stent. Claim 20 does not, however, place any
limitation on the relative position of the ends of the strut elements.
Rather, claim 20 simply requires the struts to be “disposed generally
along the longitudinal axis” (App. Br. 7 (emphasis added)), and the
Specification does not clarify with any specificity what proportion of the
struts must lie along the longitudinal axis to be encompassed by this
language. As seen in Figure 14, Globerman’s struts are in fact positioned
along the longitudinal axis of the stent.
Moreover, as also seen in Figure 14, because of their waved
configuration, a significant proportion of the struts actually lies generally
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along the longitudinal axis. The fact that this curved portion of the strut lies
generally along the longitudinal axis of the stent also supports the
Examiner’s finding that Globerman’s struts meet claim 20’s requirement for
the curved portions to be “generally placed along said longitudinal axis of
the stent” (App. Br. 7 (claim 20)).
As the strut elements AB and CD are connected at their ends (see Ans.
6), we also agree with the Examiner that Globerman’s struts are connected in
the manner required by claim 20 (see App. Br. 7 (“said first end portion
being connected to a second end portion of a first immediately adjacent strut,
and said second end portion being connected to a first end portion of a
second immediately adjacent strut”)).
In sum, Appellants’ arguments do not persuade us, for the reasons
discussed, that the Examiner erred in finding that the language in claim 20
encompasses the stent described by Globerman. We therefore affirm the
Examiner’s rejection of that claim as anticipated by Globerman. As they
were not argued separately, claims 21-37 fall with claim 20. See 37 C.F.R. §
41.37(c)(1)(vii).
SUMMARY
We affirm the Examiner’s rejection of claims 20 and 29 for
nonstatutory obviousness-type double patenting.
We also affirm the Examiner’s rejection of claims 20-37 under 35
U.S.C. § 102(e) as anticipated by Globerman.

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

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