Ex Parte Jang

Board of Patent Appeals and Interferences

Mar 7, 2011

10321005 (B.P.A.I. Mar. 7, 2011)

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.
10/321,005 12/17/2002 G. David Jang S63.2-10752-US04 2934
490 7590 03/08/2011
VIDAS, ARRETT & STEINKRAUS, P.A.
SUITE 400, 6640 SHADY OAK ROAD
EDEN PRAIRIE, MN 55344
EXAMINER
BUI, VY Q
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
03/08/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte G. DAVID JANG
____________________

Appeal 2009-008709
Application 10/321,005
Technology Center 3700
____________________

Before WILLIAM F. PATE, III, JOHN C. KERINS, and
FRED A. SILVERBERG, Administrative Patent Judges.

SILVERBERG, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-008709
Application 10/321,005

2
STATEMENT OF THE CASE
G. David Jang (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 46-58. We have jurisdiction under 35 U.S.C.
§ 6(b).
We REVERSE.

THE INVENTION
Appellant’s claimed invention is directed to an intravascular stent
having a chevron shape which provides easy navigation through tortuous
sections of vessels (Spec. 2: 8-10 and Spec. 16: 12-24).
Claim 46, reproduced below, is representative of the subject matter on
appeal.
46. A medical device comprising:
a catheter and a radially expandable stent mounted on the
catheter, the stent comprising
a hollow, cylindrical body comprising first and second
rings extending circumferentially around the cylindrical body,
each ring comprising an undulating series of peaks and valleys
formed by struts connecting alternating curved peak and valley
segments within the ring, the struts comprising a first curved
segment curved substantially symmetrically about a single
circumference of the stent such that the peaks and valleys
within a ring form a nested chevron pattern; and
at least one longitudinal connection between the first and
second rings.

THE REJECTIONS
The following rejections by the Examiner are before us for review:
1. Claims 46-53 and 55 are rejected under 35 U.S.C. § 102(b) as being
anticipated by, or in the alternative, under 35 U.S.C. § 103(a) as
Appeal 2009-008709
Application 10/321,005

3
unpatentable over, von Oepen (DE 297 02 671 U1, published May 22,
1997).
2. Claims 54 and 56-58 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over von Oepen.

ISSUES
The issues before us are: (1) whether the Examiner erred in finding
that von Oepen describes “at least one longitudinal connection between the
first and second rings,” as called for in independent claim 46, and (2)
whether the Examiner erred in concluding that it would have been obvious
to provide von Oepen’s Figure 8 embodiment with a curved connector, as
called for in dependent claim 54.

ANALYSIS
Claims 46-53 and 55
Appellant contends that “[n]owhere does Von Oepen [sic, von Oepen]
even consider the possibility that the spring elements 64 and 65 can be
separated by any form of longitudinal connector” (App. Br. 9) (emphasis
bolded). In support thereof, Appellant contends that, in von Oepen, sub
elements 64 and 65 are mirror images of each other formed along a fold or
longitudinal axis (id.).2

2 Appellant references the US equivalent of von Oepen (US 6,193,747 B1
issued Feb. 27, 2001) when referring to von Oepen (App. Br. 9). The
Examiner has included the US equivalent of von Oepen in the Evidence
Relied Upon section of the Examiner’s Answer (Ans. 3). Accordingly, all
references to von Oepen in our analysis will be to the US equivalent of von
Oepen.
Appeal 2009-008709
Application 10/321,005

4
The Examiner found that von Oepen in Figure 8 (1) clearly shows
parts of spring 63 as rings 64, 65, and (2) clearly shows mid portions of
spring elements 63 as longitudinal connectors (Ans. 7).
Claim 46 calls for, inter alia, “at least one longitudinal connection
between the first and second rings.”
von Oepen is silent as to whether there is a longitudinal connection
between the element web patterns 64, 65. As such, it becomes incumbent
upon the Examiner to provide an adequate basis in fact and/or technical
reasoning that would support a finding that von Oepen describes a
longitudinal connector between the element web patterns 64, 65.
von Oepen describes that “[t]he element 63 is composed of two
spring-element or web patterns 64, 65 in the illustrated embodiment. As
illustrated in FIG. 8, the element web patterns 64, 65 are formed by mirror-
inversion or folding on a symmetrical axis A” (col. 6, ll. 10-14).
In Figure 8 of von Oepen, we find that since element web patterns 64,
65 are formed from mirror-inversion or folding on symmetrical axis A,
element web pattern 64 ends where element web pattern 65 begins. Thus,
we find that there is no appreciable longitudinal connection between element
web patterns 64, 65.
We find that the Examiner has not provided an adequate basis in fact
and/or technical reasoning that would support a finding that von Oepen
describes a longitudinal connector between the element web patterns 64, 65.
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (“Inherency, however,
may not be established by probabilities or possibilities. The mere fact that a
certain thing may result from a given set of circumstances is not sufficient.”)
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Application 10/321,005

5
Thus, we find that von Oepen does not describe “at least one
longitudinal connection between the first and second rings,” as called for in
independent claim 46.
We reverse the rejection of independent claim 46, and dependent
claims 47-53 and 55.

Claim 54
The Examiner (1) found that von Oepen’s Figure 8 embodiment
includes a straight connector, and (2) concluded that it would have been
obvious to provide von Oepen’s Figure 8 embodiment with a curved
connector since they are well known in the art, that is, it would have been
obvious to substitute a curved connector for von Oepen’s straight connector.
Claim 54 calls for “wherein at least one longitudinal connector is
curved.”
As we found supra regarding independent claim 46, in von Oepen’s
Figure 8 embodiment, there is no appreciable longitudinal connection
between element web patterns 64, 65. Thus, we find that there is also no
longitudinal connector between element web patterns 64, 65. Since von
Oepen does not describe a longitudinal connector, we conclude that it would
not have been obvious to provide von Oepen with a curved connector, that
is, it would not have been obvious to substitute a curved connector for von
Oepen’s straight connector, which does not exist. KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398, 418 (2007) (“[R]ejections 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.”)).
Appeal 2009-008709
Application 10/321,005

6
We reverse the rejection of dependent claim 54.

Claims 56-58
The Examiner has not provided a rationale that would cure the
deficiency in von Oepen (Ans. 6).
Thus, for the same reasons set forth supra regarding independent
claim 46, we reverse the rejection of dependent claims 56-58.

CONCLUSION
The Examiner has erred in finding that von Oepen describes “at least
one longitudinal connection between the first and second rings,” as called
for in independent claim 46.
The Examiner has erred in concluding that it would have been
obvious to provide von Oepen’s Figure 8 embodiment with a curved
longitudinal connector, as called for in dependent claim 54.

DECISION
The decision of the Examiner to reject claims 46-58 is reversed.

REVERSED

mls

VIDAS, ARRETT & STEINKRAUS, P.A.
SUITE 400, 6640 SHADY OAK ROAD
EDEN PRAIRIE, MN 55344