Ex Parte Horres et al

Patent Trial and Appeal Board

Sep 9, 2014

11913545 (P.T.A.B. Sep. 9, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/913,545 11/02/2007 Roland Horres JCLA26054 6269
23900 7590 09/10/2014
J C PATENTS
4 VENTURE, SUITE 250
IRVINE, CA 92618
EXAMINER
BOWMAN, ANDREW J
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
09/10/2014 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
_________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte ROLAND HORRES,
MICHAEL HOFFMANN, ERIKA HOFFMANN,
MARITA LINSSEN, ROGER CASPERS,
and MICHAELA STYRNIK
__________

Appeal 2013-000050
Application 11/913,545
Technology Center 1700
___________

Before ADRIENE LEPIANE HANLON, MICHAEL P. COLAIANNI, and
WHITNEY N. WILSON, Administrative Patent Judges.

HANLON, Administrative Patent Judge.

DECISION ON APPEAL

A. STATEMENT OF THE CASE
Roland Horres, et al. (“Appellants”) appeal under 35 U.S.C. § 134 from a
final rejection of claims 1-34, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Claim 1 is representative of the subject matter on appeal and is reproduced
below from the Claims Appendix of the Appeal Brief dated January 11, 2012
(“App. Br.”). The limitation at issue is italicized.
Appeal 2013-000050
Application 11/913,545

2

1. Method for coating the entire surface of lattice-like or mesh-
like endoprostheses, wherein in a first coating step the struts of the
endoprosthesis which form the lattice-like or mesh-like structure are
being covered completely or partially with a polymer coating and in a
second coating step the entire surface of the interstices located
between the struts which form the lattice-like or mesh-like structure is
being coated with a polymer coating, wherein a protruding part is left
on both ends, and said protruding part is folded over the edge of the
endoprosthesis.
App. Br. 9.
The claims on appeal stand rejected as follows: claims 1-9, 13-22, and 27-
34 under 35 U.S.C. § 103(a) as unpatentable over Mangiardi
1
in view of Stiger
2

and claims 10-12 and 23-26 under 35 U.S.C. § 103(a) as unpatentable over
Mangiardi in view of Stiger and further in view of Li.
3

B. DISCUSSION
Claim 1 recites a method for coating the entire surface of a lattice-like or
mesh-like endoprosthesis. In a first coating step, the struts of the endoprosthesis
which form the lattice-like or mesh-like structure are covered with a polymer
coating. In a second coating step, the entire surface of the interstices located
between the struts is coated with a polymer coating “wherein a protruding part is
left on both ends, and said protruding part is folded over the edge of the
endoprosthesis.” App. Br. 9.
The Examiner finds that Mangiardi discloses a method for coating a lattice-
like stent with a polymer coating as recited in claim 1, with the exception that
Mangiardi does not disclose that “a protruding part is left on both ends, and said

1
WO 2005/030086 A2, published April 7, 2005.
2
US 2002/0138127 A1, published September 26, 2002.
3
US 5,977,163, issued November 2, 1999.
Appeal 2013-000050
Application 11/913,545

3

protruding part is folded over the edge of the [stent].” The Examiner, however,
finds that Stiger discloses “a protruding part” as recited in claim 1. Ans. 4-5.
4

At the center of the dispute in this appeal is the meaning of the limitation
“wherein a protruding part is left on both ends,” and more specifically, the
meaning of the phrase “a protruding part” as recited in claim 1.
The Appellants contend that “a protruding part” refers to the portion of the
polymer coating deposited during the second coating step and left on both ends of
the endoprosthesis. See App. Br. 7. The Examiner, on the other hand, interprets “a
protruding part” as encompassing a separate and distinct structure from the claimed
endoprosthesis (e.g., excess material 50 of sleeve 20 in Stiger which retains stent
22 on a catheter for insertion into a body cavity). See Ans. 10 (“The applicant does
not claim that the protruding part is part of the coating.”).
The Specification “is the single best guide to the meaning of a disputed
term” and is usually “dispositive.” Vitronics Corp. v. Conceptronic, Inc., 90 F.3d
1576, 1582 (Fed. Cir. 1996); see also In re ICON Health & Fitness, Inc., 496 F.3d
1374, 1379 (Fed. Cir. 2007) (during examination, claims must be given their
broadest reasonable construction consistent with the specification).
Turning to the Appellants’ Specification, the Appellants disclose:
For avoiding that injuries are caused by the ends of the implant, a
further step is advantageous for such medical devices the surfaces of
which have to be completely coated on said ends. The obtained
coating is not cut off along the edge of the implant, but a protruding
part is left on both ends, and said protruding part is folded over the
edge of the implant during this last working step.
Spec. 25, ll. 10-14 (emphasis added).

4
Examiner’s Answer dated July 31, 2012.
Appeal 2013-000050
Application 11/913,545

4

Based on this disclosure, we conclude that the broadest reasonable
construction of the limitation ”wherein a protruding part is left on both ends,” is
that a protruding part of the polymer coating deposited during the second coating
step is left on both ends of the endoprosthesis. The protruding part of the polymer
coating is subsequently folded over the edge of the endoprosthesis. See App. Br. 9.
The Examiner has failed to show that leaving a protruding part of
Mangiardi’s polymer coating on both ends of the stent in the second coating step
would have been obvious to one of ordinary skill in the art based on the teachings
of Stiger. In this regard, we note that sleeve 20 in Stiger does not coat stent 22.
Rather, sleeve 20 is bonded directly to a catheter shaft to retain stent 22 around
balloon 18 for insertion into a body cavity. Stiger ¶¶ 23-24.
The Examiner does not rely on Li to cure the deficiencies in the rejection of
claim 1, identified above. Therefore, the § 103(a) rejections on appeal will not be
sustained.
C. DECISION
The decision of the Examiner is reversed.

REVERSED

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