Ex Parte Jang

Board of Patent Appeals and Interferences

Oct 16, 2007

10419280 (B.P.A.I. Oct. 16, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte G. DAVID JANG
____________

Appeal 2007-3493
Application 10/419,280
Technology Center 3700
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Decided: October 16, 2007
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Before TONI R. SCHEINER, ERIC GRIMES, and LORA M. GREEN,
Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 65-71, 75, 77, 78, 83-85, 88, and 89.
We have jurisdiction under 35 U.S.C. § 6(b). Claims 65 and 89 are
representative of the claims on appeal, and read as follows:
Appeal 2007-3493
Application 10/419,280

65. An expandable stent, comprising:
a tubular structure including, a plurality of expansion struts, the
expansion struts arranged in serpentine bands which extend around the
circumference of the stent,
connector struts, the connector struts connecting adjacent serpentine
bands, and
a plurality of cavities in the expansion struts and connector struts, the
cavities extending all the way through the connector struts and the expansion
struts.

89. An expandable stent, comprising:
a tubular structure including an outer surface positionable adjacent to
a vessel wall, an inner surface facing a lumen of a body passageway, a
plurality of expansion struts forming expansion columns which extend about
the circumference of the stent, and connector struts;
a plurality of cavities formed in the outer surface of the stent and
extending all the way through the inner surface of the stent, the cavities
being located in both the expansion struts and the connector struts, and a
coating substance extending into at least a portion of the cavities.

The Examiner relies on the following references:
Jang US 5,954,743 Sep. 21, 1999
Thompson US 6,132,461 Oct. 17, 2000
Ndondo-Lay US 6,273,908 B1 Aug. 14, 2001
Baker US 6,558,422 B1 May 6, 2003

We affirm-in-part.
DISCUSSION
Claims 65, 67, 69, 75, 77, and 78 stand rejected under 35 U.S.C. §
102(e) as being anticipated by Thompson. As Appellant does not argue the
claims separately, we focus our analysis on representative claim 65. 37
C.F.R. § 41.37(c)(1)(vii) (2006).
According to the Examiner,
Thompson discloses an expandable stent comprising a tubular
structure including a plurality of struts arranged into serpentine
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Application 10/419,280

bands which extend around the circumference of the stent and
connector struts connecting adjacent bands (see attachment 1, 2
for two different interpretations of the Thompson reference by
the examiner; and arguments below), and a plurality of cavities
(30) in the struts and connectors, extending all the way through
the struts (fig.4, 5).

(Answer1 3-4.)
To anticipate, every element and limitation of the claimed invention
must be found in a single prior art reference, arranged as in the claim.
Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir.
2001).
The Examiner has presented marked up drawings of Figure 2 of
Thompson. Figure 2 is reproduced below.

1 All references to the Answer are to the Examiner’s Answer mailed April
11, 2007.
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Application 10/419,280

Figure 2 is a plan view of a stent disclosed by Thompson, as if the
stent were longitudinally split and laid out flat. The Examiner has added
notations to support her findings that the stent has bands of extension struts,
as well as connectors, as required by claim 65.
According to Appellant, the stent of Thompson lacks connector struts,
but is instead in the form of a plurality of expansion columns which overlap
in several locations (Br.2 5-6). Thus, Appellant asserts, there is no separate
structure which extends between adjacent expansion columns (id. at 6).
Our interpretation of Figure 2 differs slightly from that of the
Examiner. Below is a blown up portion of Figure 2 of Thompson.

As noted above, Figure 2 is a plan view of a stent disclosed by
Thompson. The portion of the stent pointed to by the added arrow reads on
“connector struts, the connector struts connecting adjacent serpentine
bands,” as a strut3 may be defined as part of a structure whose principal
function is to hold things apart. In the stent of Thompson, the connector
strut, as pointed out in the blown up portion of Figure 2 of Thompson, holds
apart the adjacent expansion struts arranged in serpentine bands around the

2 All references to the Brief (Br.) are to the Amended Brief on Appeal dated
March 6, 2007.
3 strut. Dictionary.com. On-line Medical Dictionary. Academic Medical
Publishing & CancerWEB. http://dictionary.reference.com/browse/strut
(accessed: October 04, 2007).
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Application 10/419,280

circumference of the stent. Note that the Specification does not provide a
different definition of a strut, and our mandate is to give claims their
broadest reasonable construction. In re American Academy of Science Tech
Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). “An essential purpose of
patent examination is to fashion claims that are precise, clear, correct, and
unambiguous. Only in this way can uncertainties of claim scope be removed,
as much as possible, during the administrative process.” In re Zletz, 893
F.2d 319, 322 (Fed. Cir. 1989).
Appellant argues further that the expansion struts do not have a
plurality of cavities; rather, each expansion strut at most has only a single
opening therein.
Claim 65 recites a stent comprising “a plurality of cavities in the
expansion struts and connector struts, the cavities extending all the way
through the connector struts and the expansion struts.” Thus, all that is
required is that there be a plurality of cavities on the stent, and not on each
expansion strut. As the stent of Thompson has a plurality of cavities, it
meets that limitation of claim 65.
Thus, we find that Thompson teaches all of the limitations of claim
65, and the rejection is affirmed.
Claims 65-67, 69, 75, 77, 78, 83-85, 88, and 89 stand rejected under
35 U.S.C. § 102(e) as being anticipated by Ndondo-Lay.
As to claim 65, the Examiner relies on Ndondo-Lay for teaching “an
expandable stent (1) comprising a tubular structure (fig.5, 6) including a
plurality of struts (3) arranged into serpentine bands (each loop 3 may be
considered a band, or each pair of loops 3 may be considered a band; see
attachment 3, 4) which extend around the circumference of the stent and
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connector struts (2 or 6 see fig.3, 4) connecting adjacent bands, and a
plurality of cavities (5) in the struts and connectors, extending all the way
through the struts (cavities 5 are disclosed to be either craters or holes,
craters extending only partially through and holes extending all the way
through; col.7,lines 33-37; co1.8, lines 40-42).” (Answer 4.)
As to claim 89, Ndondo-Lay is cited for teaching “a stent comprising
a tubular structure having an[ ] outer and inner surface, expansion struts (3)
and connector struts (2), and a plurality of cavities (5) formed in the outer
surface and extending through the inner surface (Ndondo-Lay discloses two
embodiments, craters-extending partially, and holes extending
fully, the hole embodiment reads on the claim), the cavities located in the
expansion and connector struts, and a coating (co1.7 line 55-co1.8 line 22,
lines 50-52) extending into the cavities (5; see attachment 3).” (Id. at 4-5.)
The Examiner has presented a marked up copy of Figure 6 of
Ndondo-Lay, reproduced below.

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Figure 6 of Ndondo-Lay is an elevation view of a stent taught by
Ndondo-Lay and shown in Figure 5 as it would appear after placement and
expansion (Ndondo-Lay, col. 5, ll. 1-2).
Appellant argues that Ndondo-Lay lacks expansion struts arranged in
serpentine bands that extend around the circumference of the stent. We
agree, and the rejection is reversed.
Figure 5 of Ndondo-Lay is reproduced below.

Figure 5 is an elevation view of the stent shown in Figure 6, prior to
placement and expansion (Ndondo-Lay, col. 4, ll. 65-67.) As can be seen
from Figures 5 and 6, it is not what the Examiner labels the Expansion band
column (the appendages 3) that provides for the expansion of the stent. The
expansion of the stent is instead provided for by the backbone 2. Thus,
Ndondo-Lay does not teach a plurality of expansion struts, the expansion
struts arranged in serpentine bands. Therefore, Ndondo-Lay does not teach
each and every limitation of claim 65, and the rejection must be reversed.
As to claim 89, claim 89 requires “a plurality of expansion struts
forming expansion columns which extend about the circumference of the
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stent.” As explained above, what provides for the expansion in the strut of
Ndondo-Lay is the backbone 2, and as the stent of Ndondo-Lay does not
have a “plurality” of backbones, but instead only has a single backbone, the
rejection is also reversed as to claim 89.
Claims 65-71, 75, 77, 78, and 894 stand rejected under 35 U.S.C. §
103(a) as being obvious over the combination of Jang and Baker. As
Appellant does not argue claims 66-71, 75, 77, and 78 separately, they stand
or fall with representative claim 65.
Jang is cited for teaching “an expandable stent substantially as
claimed.” (Answer 5.) The Examiner notes that Jang fails to teach forming
cavities in the stent (id.).
Baker is cited for teaching the formation of cavities of different
shapes, sizes, and angles on medical devices, including stents (id.). The
cavities extend through the entire surface of the medical device, and are used
to deliver a coating of drug when the device is implanted (id.). The
Examiner concludes “[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made to combine Jang's stent
structure, with Baker's teaching of placing various types of drug coating

4 We note that the rejection does not include claims 83-85 and 88. Upon
return of the administrative file, the Examiner may wish to consider whether
these claims would be obvious over the teachings of Jang and Baker, as
combined with Ndondo-Lay. We also note Appellant’s statement in the
Specification that the “main invention . . . in not an invention of the stent
itself,” rather it is “the particular measures designed to increase drug coating
or attachment capacity of a stent by adding exposed surface areas or
reservoir capacity of the stent, without increasing the width or thickness of
the stent struts or without increasing the metal fraction of the stent.”
(Specification 2.)
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containing cavities on stents, in order to have a stent with Jang's specific
strut structure capable of releasing drugs during implantation.” (Id. at 5-6.)
“In rejecting claims under 35 U.S.C. § 103, the Examiner bears the
initial burden of presenting a prima facie case of obviousness. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1996): (1) the scope and content
of the prior art; (2) the differences between the prior art and the claims at
issue; (3) the level of ordinary skill in the relevant art; and (4) objective
evidence of nonobviousness, if present.
Appellant argues that Baker does not provide any teachings as to how
the indentations should be distributed around the stent, thus, the combination
does not teach providing a stent with cavities in both the connector struts and
the expansion struts (Br. 9).
Baker teaches placement of a plurality of indentations on a
medical device for delivery of a biologically active substance (see,
e.g., Baker, col. 1, “Summary of the Invention.”) Thus, it would have
been obvious to the ordinary artisan to place identations on both the
expansion struts and connector struts to maximize the amount of the
desired biological substance that can be delivered through placement
of the device. As noted by the United States Supreme Court,

If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
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a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
technique is obvious unless its actual application is beyond his
or her skill.

KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1740 (2007).
As to claim 89, Appellant merely reiterates his arguments as to claim
65 (Br. 10), and the rejection is affirmed for the reasons set forth above.

CONCLUSION
In summary, we affirm the rejection of claims 65, 67, 69, 75, 77, and
under 35 U.S.C. § 102(e) as being anticipated by Thompson; and the
rejection of claims 65-71, 75, 77, 78, and 89 under 35 U.S.C. § 103(a) as
being obvious over the combination of Jang and Baker. We reverse,
however, the rejection of claims 65-67, 69, 75, 77, 78, 83-85, 88, and 89
under 35 U.S.C. § 102(e) as being anticipated by Ndondo-Lay.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).

AFFIRMED-IN-PART

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