Ex Parte Jung et al

Patent Trial and Appeal Board

Jun 16, 2015

11541378 (P.T.A.B. Jun. 16, 2015)

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.
11/541,378 09/29/2006 Edward K.Y. Jung SE1-0328-US 9157
80118 7590 06/16/2015
Constellation Law Group, PLLC
P.O. Box 580
Tracyton, WA 98393
EXAMINER
KAPOOR, SIDHARTH
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
06/16/2015 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 EDWARD K.Y. JUNG, ROBERT LANDER,
ERIC C. LEUTHARDT, ROYCE A. LEVIEN, ROBERT W. LORD,
MARK A. MALAMUD, JOHN D. RINALDO JR,
CLARENCE T. TEGREENE, and LOWELL L. WOOD JR.1
__________

Appeal 2012-011169
Application 11/541,378
Technology Center 3700
__________

Before CHRISTOPHER G. PAULRAJ, ROBERT A. POLLOCK, and
AMANDA F. WIEKER, Administrative Patent Judges.

WIEKER, Administrative Patent Judge

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to a
system for modeling and configuring a stent, which have been rejected for
indefiniteness, obviousness, and, provisionally, for double patenting. We
have jurisdiction under 35 U.S.C. § 6(b).
We reverse the obviousness rejection, affirm the indefiniteness
rejection, and affirm five of the six double patenting rejections.

1 According to Appellants, the Real Party in Interest is Searete, LLC, wholly
owned by Intellectual Ventures Management LLC (App. Br. 5).
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STATEMENT OF THE CASE
Appellants’ Specification discloses a system and method for
“receiving a parameter relating to a specific patient and customizing one or
more attributes of a stent ex situ as an at-least-roughly contemporaneous
response to receiving the parameter relating to the specific patient” (Spec. 3,
ll. 9–19).
Claims 1 and 31–75 are on appeal (App. Br. 5).2 Claim 1 is
illustrative and reads as follows:
1. A system comprising:
means for receiving, by a stent processing module comprising a model
implementer, a parameter from a user over a network, wherein the parameter
relates to a specific patient;
means for processing the parameter by the model implementer to
generate a feasible heuristic stent model by adapting the model implementer
to incorporate only components that are available in accordance with an
inventory shortage determined by receiving information related to at least
several inventories that confirm a shortage in a supply of the components to
enable generation of one or more functionally equivalent stents; and
means for configuring, in the stent processing module and in
accordance with the stent model, a stent with a flow occlusion portion in an
at-least-roughly contemporaneous response to receiving the parameter
relating to the specific patient, the means for configuring the stent located at
a manufacturing facility that is ex situ from a patient care facility.

(id. at 50 (emphasis added)). Independent claims 31 and 73 contain
substantially similar language to that emphasized above (id. at 50, 57).

2 Claims 2–30 have been cancelled (App. Br. 5).
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The claims stand rejected as follows:
Claims 73–75 under 35 U.S.C. § 112, second paragraph, as indefinite
for lacking sufficient antecedent basis (Ans. 4).3
Claims 1 and 31–75 under 35 U.S.C. § 103(a) as obvious over
Anderson4 and Golesworthy5 (id. at 5–9).
Claims 1 and 31–75 as provisionally rejected for obviousness-type
double patenting based on claims 1–38 of application 11/526,2036 (id. at
3–4, Final Act.7 9–10).
Claims 1 and 31–75 as provisionally rejected for obviousness-type
double patenting based on claims 1–39 of application 11/526,2018 (Ans.
3–4, Final Act. 10).
Claims 1 and 31–75 as provisionally rejected for obviousness-type
double patenting based on claims 1–36 of application 11/526,089 (Ans. 3–4,
Final Act. 10–11).
Claims 1 and 31–75 as provisionally rejected for obviousness-type
double patenting based on claims 1–48 of application 11/526,1449 (Ans.
3–4, Final Act. 11).

3 The Examiner’s additional rejection of claims 1 and 31–75 under 35 U.S.C.
§ 112, second paragraph, has been withdrawn (Ans. 4).
4 Anderson et al., US 7,371,067 B2, issued May 13, 2008.
5 Golesworthy et al., US 2006/0129228 A1, published June 15, 2006.
6 This application has since issued as US 7,769,603.
7 Final Office Action (“Final Act.”), dated Aug. 20, 2010.
8 This application has since issued as US 8,475,517.
9 This application has since issued as US 8,430,922.
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Claims 1 and 31–75 as provisionally rejected for obviousness-type
double patenting based on claims 87, 88, 90, 93, 95–98, 100–105, 111–127,
129–140, and 159 of application 11/455,01010 (Ans. 3–4, Final Act. 11–12).
Claims 1 and 31–75 as provisionally rejected for obviousness-type
double patenting based on claims 2, 20, 21, 23, 25, 27–30, 32–40, 42, 43,
45–47, and 51–53 of application 11/541,37711 (Ans. 3–4, Final Act. 12).
I.
The Examiner has rejected claims 73–75 under 35 U.S.C. § 112,
second paragraph, as indefinite for lacking adequate antecedent basis (Ans.
4). The Examiner finds that independent claim 73 recites “the model
implementer” without sufficient antecedent basis for that term. Claims 74
and 75 depend from claim 73 (id.).
Appellants do not address this ground of rejection in their Appeal
Brief and have not filed a Reply Brief (see App. Br. 14–18 (addressing only
those grounds of rejection withdrawn by the Examiner)).
Because Appellants do not address this rejection, we summarily
affirm it. See Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008)
(explaining that summary affirmance without consideration of the
substantive merits is appropriate where an appellant fails to contest a ground
of rejection).

10 This application has since issued as US 8,551,155.
11 This application has since been abandoned.
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II.
The Examiner has rejected claims 1 and 31–75 as provisionally
rejected for obviousness-type double patenting based on application
numbers 11/526,203; 11/526,201; 11/526,089; 11/526,144; 11/455,010; and
11/541,377 (see Ans. 3–4; Final Act. 9–12; see supra n. 6, 8–11).
Appellants do not identify these rejections as being appealed and
present no argument for their reversal (see App. Br. 14). Accordingly, we
summarily affirm the rejections based on application numbers 11/526,203;
11/526,201; 11/526,144; and 11/455,010. See Hyatt, 551 F.3d at 1314. We
note, however, that these applications have since issued as U.S. Patents and,
therefore, these rejections are no longer provisional. We also summarily
affirm the provisional double patenting rejection based on application
number 11/526,089, which remains pending. See Hyatt, 551 F.3d at 1314.
Finally, the rejection based on application number 11/541,377 is moot, in
light of that application’s abandonment.
III.
Issue
The Examiner has rejected claims 1 and 31–75 under 35 U.S.C.
§ 103(a) as obvious over Anderson and Golesworthy. The Examiner finds
that Anderson discloses a system wherein patient-specific parameters are
obtained and processed by a processing system comprising a model
implementer to generate a virtual stent model, which is then used to create a
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custom stent (Ans. 5).12 With respect to the claim language requiring the
system “generate a feasible heuristic stent model by adapting the model
implementer to incorporate only components that are available in accordance
with an inventory shortage . . .,” the Examiner “notes that this is a functional
recitation . . . . [wherein the claims] require that the apparatus is capable of
incorporating only components available in accordance with such an
inventory shortage, should said inventory shortage be provided to the model
implementer” (id. at 6). The Examiner also notes that “inventory shortage is
defined very broadly” and “requires only that multiple inventories confirm a
shortage in a supply of components. . . . [A]ny inventory that lacks a stent
that exactly matches the geometry of patient’s vessel anatomy may be
considered to confirm a shortage in a supply of components” (id.).
Therefore, the Examiner concludes that Anderson and Golesworthy render
obvious a system as claimed (id. at 7).
Appellants contend, inter alia, that “the portions of Anderson cited by
the USPTO do not recite the recitations of Independent Claim 1” requiring
the claimed “means for processing the parameter by the model implementer
to generate a feasible heuristic stent model by adapting the model
implementer to incorporate only components that are available in accordance
with an inventory shortage . . . .” (App. Br. 25; see also id. at 28–48
(applying the same arguments to independent claims 31 and 73)).

12 The Examiner finds that Golesworthy teaches a rapid prototyping device
used to fabricate the customized stent (Ans. 5–6).

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The issue with respect to this rejection is whether Anderson and
Golesworthy render obvious a system comprising the claimed “means for
processing the parameter by the model implementer to generate a feasible
heuristic stent model by adapting the model implementer to incorporate only
components that are available in accordance with an inventory shortage,” as
recited in claim 1, or as comparably recited in claims 31 and 73.
Principles of Law
“An examiner bears the initial burden of presenting a prima facie case
of obviousness.” In re Huai-Hung Kao, 639 F.3d 1057, 1066 (Fed. Cir.
2011).
“[A]pparatus claims cover what a device is, not what a device does.”
Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed.
Cir. 1990). If a prior art structure is capable of performing the intended use,
then it meets the claim. See, e.g., In re Schreiber, 128 F.3d 1473, 1477 (Fed.
Cir. 1997). However, the Federal Circuit has “explained that the apparatus
as provided must be ‘capable’ of performing the recited function, not that it
might later be modified to perform that function.” Typhoon Touch Techs.,
Inc. v. Dell, Inc., 659 F.3d 1376, 1380 (Fed. Cir. 2011).
Analysis
Despite agreeing with the Examiner’s finding that the phrase
“inventory shortage” is very broad (see Ans. 6), we conclude that the
Examiner has not presented a prima facie case demonstrating that Anderson
and Golesworthy render obvious a means for processing that “generates a
feasible heuristic stent model by adapting the model implementer to
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incorporate only components that are available in accordance with an
inventory shortage . . . .” (see Ans. 6, 9). Although claims directed to an
apparatus must be distinguished from the prior art in terms of structure
rather than function, the prior art apparatus must be capable of performing
the claimed function. In re Schreiber, 128 F.3d at 1477–78. When the
functional language is associated with programming or some other structure
required to perform the function, that programming or structure must be
present in the apparatus as provided to meet the claim, without requiring
further programming. See Typhoon Touch Techs., 659 F.3d at 1380. Here,
the Examiner has not established that Anderson’s system is capable of
performing the claimed function without additional programming to provide
inventory shortages to the model implementer (see Ans. 6; see also
Anderson, col. 12, l. 21–col. 15, l. 11). Although “inventory shortage” may
be interpreted broadly, the Examiner has not established that Anderson’s
system performs any kind of processing to determine whether a desired
component is available, in conjunction with generation of the model.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Anderson and Golesworthy render obvious a system comprising the
claimed “means for processing the parameter by the model implementer to
generate a feasible heuristic stent model by adapting the model implementer
to incorporate only components that are available in accordance with an
inventory shortage,” as recited in claim 1, or as comparably recited in claims
31 and 73. We reverse the rejection of these claims, and claims 32–72, 74,
and 75, which depend therefrom.
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SUMMARY
We AFFIRM the rejection of claims 73–75 under 35 U.S.C. § 112,
second paragraph, as lacking antecedent basis.
We AFFIRM the rejection of claims 1 and 31–75 as provisionally
rejected for obviousness-type double patenting over application number
11/526,089.
We AFFIRM the rejections of claims for obviousness-type double
patenting over application numbers 11/526,203; 11/526,201; 11/526,144;
and 11/455,010 and note that these rejections are no longer provisional.
We REVERSE the rejection of claims 1 and 31–75 under 35 U.S.C.
§ 103(a) as obvious over Anderson and Golesworthy.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED
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