Ex parte Lukic et al.

Board of Patent Appeals and Interferences

Jun 26, 1998

08249821 (B.P.A.I. Jun. 26, 1998)

Application for patent filed May 26, 1994.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte GORAN LUKIC and EUGEN HOFMANN
____________
Appeal No. 97-2551
Application 08/249,8211
____________
HEARD: JUNE 9, 1998
____________
Before STAAB, McQUADE and CRAWFORD, Administrative Patent
Judges.
CRAWFORD, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the examiner’s
final rejection of claims 11-34. Claims 1-10 have been
canceled. Appellant’s claimed subject matter is self-
Appeal No. 97-2551
Application 08/249,821
2
expanding endoprosthesis. Claim 11 is illustrated of the
subject matter on appeal and recites:
11. A device for releasing a self-expanding
endoprosthesis, the device comprising:
(a) an inner catheter,
(b) a first outer catheter slidably disposed at
least partially about the inner catheter and having an inner
surface; and
(c) a second outer catheter slidably disposed at
least partially about the first outer catheter and having an
inner surface;
wherein the inner surface of the first outer
catheter is adapted to receive a first end portion of a self-
expanding endoprosthesis and the inner surface of the second
outer catheter is adapted to receive a second end portion of
the endoprosthesis.
THE REFERENCE
The following reference is relied on by the examiner
in support of the rejection under 35 USC § 102(b):
Garza et al. (Garza) 4,665,918 May 19,
1987
THE REJECTION
Claims 11-34 stand rejected under 35 USC § 102(b) as
being anticipated by Garza.
Appeal No. 97-2551
Application 08/249,821
3
Rather than reiterate the examiner’s full statement
of the above-noted rejection and the conflicting viewpoints
advanced by the examiner and the appellants regarding the
rejection, we make reference to the examiner’s answer (Paper
No. 22) for the examiner’s complete reasoning in support of
the rejection and the appellant’s brief (Paper No. 21) for the
appellant’s arguments thereagainst.
OPINION
We have carefully reviewed appellants’ invention as
described in the specification, the appealed claims, the prior
art reference applied by the examiner, and the respective
positions advanced by the appellants and the examiner. As a
consequence of our review, we have made the determinations
that follow.
Garza discloses a device for releasing a self-
expanding endoprosthesis 25. The device includes an inner
catheter 18 and a first outer catheter 50, which is slidably
disposed about the inner catheter. (Figures 1 and 6; Column 3,
lines 51-53; Column 5, lines 37-38). Garza also discloses a
second outer catheter 78 slidably disposed about the first
outer catheter 50 (Figures 1 and 6; Column 4, lines 18-20;
Appeal No. 97-2551
Application 08/249,821
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Column 5, lines 3-6). Each of the outer catheters (50, 78)
has an inner surface. As the inner catheter 18 is slidably
received in the first outer catheter 50 and the first outer
catheter is slidably received in the second outer catheter 78,
the inner surface of the first outer catheter 50 is capable of
receiving a first end portion of the self-expanding
endoprosthesis. Likewise, the inner surface of the second
outer catheter 78 is capable of receiving a second end portion
of the endoprosthesis.
Appellants argue that Garza does not disclose a
second outer catheter. We simply do not agree and find that
Garza clearly discloses a second outer catheter 78. Appellant
also argues that the endoprosthesis are clearly shown
configured within the single outer catheter 50. We are not
persuaded by this argument because the law of anticipation
does not require that the reference teach what the appellant
is claiming, but only that the claims on appeal “read-on”
something disclosed in the reference. See Kalman v. Kimberly-
Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir.
1983), cert. denied, 465 U.S. 1026 (1984)). In our view, the
device disclosed by Garza is capable of disposing the
Appeal No. 97-2551
Application 08/249,821
5
endoprothesis within both the first outer catheter 50 and the
second outer catheter 78 and as such is “adapted to receive a
first end portion of a self-expanding endoprosthesis” as
recited in claim 11.
Appellants further argue that the device of Garza is
incapable of separately releasing respective ends of a
prosthesis or recapturing a device in mid-release by moving a
second outer catheter distally to its original position. We
do not find this argument persuasive because it is not
commensurate with the actual scope of claim 11 which does not
recite that the respective ends of the prosthesis are
separately released or that the device is recaptured in mid-
release by moving a second outer catheter distally to its
original position.
In view of the foregoing, we will sustain the
examiner’s rejection of claim 11. We will also sustain the
examiner’s rejection of claims 12-22, as the appellants
indicate that these claims stand or fall together (Brief at
page 3).
We will not, however, sustain this rejection as it
relates to claim 23 because there is no disclosure in Garza of
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Application 08/249,821
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a self-expanding endoprosthesis having “a second end portion
configured within and in contact with the curved inner surface
of the second outer catheter.” Rather, Garza discloses that
outer catheter 78 covers catheter 50 and at no point is there
disclosure that the outer catheter 78 is in contact with the
prosthesis as required by claim 23. In view of the foregoing
we will not sustain the examiner’s rejection of claim 23, nor
of claims 24-34 dependant therefrom.
The examiner’s rejection of claims 11-22 is
sustained. The examiner’s rejection of claims 23-34 is
not sustained.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
1.136(a).
AFFIRMED-IN-PART
LAWRENCE J. STAAB )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
Appeal No. 97-2551
Application 08/249,821
7
JOHN P. McQUADE ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
MURRIEL E. CRAWFORD )
Administrative Patent Judge )
Peter C. Richardson
Pfizer Inc.
235 East 42nd Street
New York, NY 10017-5755