Ex Parte Meyer et al

Patent Trial and Appeal Board

Sep 23, 2013

11873058 (P.T.A.B. Sep. 23, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL P. MEYER,
THOMAS E. BROOME, AMNON YADIN,
DANIEL GREGORICH, KEVIN GROTHEIM, and JENS HEGG
____________

Appeal 2011-008766
Application 11/873,058
Technology Center 3700
____________

Before JENNIFER D. BAHR, GAY ANN SPAHN, and
HYUN J. JUNG, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
rejection of claims 1, 4, 5, 10, 12, and 14. We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2011-008766
Application 11/873,058

2
Claimed Subject Matter
The claimed subject matter relates to implantable medical devices
such as stents which include frames having closed shape expansion elements
“to provide additional perimeter which can be exploited to enlarge the frame
area.” See Spec. 1, ll. 10-11, 16-18, and Spec 10, ll. 17-28. Claim 1 (the
sole independent claim), reproduced below, is representative of the appealed
subject matter.
1. A bifurcation stent comprising a main branch portion and
a side branch portion, the main branch portion and the side
branch portion interfacing about a frame, said frame
surrounding the side branch portion, the stent having an
unexpanded state in which the stent comprises a generally
tubular wall defining a first lumen and an expanded state in
which the first lumen is radially enlarged and the side branch
portion projects obliquely outward from the first lumen and
defines a second lumen in fluid communication with the first
lumen through an opening defined by said frame, wherein
the frame includes at least one closed shape geometry
portion, the frame has a first configuration enclosing a first area
when subjected to frame expansion stress within a first pressure
range and the frame expands to a second configuration
enclosing a second area larger than the first area when the
frame is subjected to expansion stress above the first pressure
range, the closed shape geometry portion having a different area
in the second configuration than in the first configuration.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 1, 4, 5, 10, 12, and 14 under 35 U.S.C. § 102(e) as
anticipated by Feld (US 2006/0173528 A1, published Aug. 3, 2006); and
II. claims 1, 4, 5, 10, 12, and 14 under 35 U.S.C. § 102(e) as
anticipated by Davidson (US 7,220,275 B2, issued May 22, 2007).
App
App

Clai

apart
with
repre
claim

14, 1
parti
porti
A po

eal 2011-0
lication 11
ms 1, 5, 10
Appellan
from inde
37 C.F.R.
sentative
s 5, 10, 1
The Exa
5, 114, 31
cularly, “[
on becaus
rtion of Fe

The portio
a “FRAM
08766
/873,058
Rejecti
, 12, and 1
ts have no
pendent c
§ 41.37(c
claim to de
2, and 14 f
miner find
3, etc.) an
t]he Exam
e the shade
ld’s Figur
n of Feld
E includin
O
on I – Ant
4
t presente
laim 1. Se
)(1)(vii) (2
cide the a
all with cl
s that Feld
d a closed
iner call[s
d struts ar
e 2 annota
’s Figure 2
g one clos
3
PINION
icipation b
d argumen
e App. Br
011), we s
ppeal of th
aim 1.
discloses
shape geo
] the frame
e in a clos
ted by the
annotated
ed shape g
ased on F
ts for clai
. 7-9. The
elect claim
e rejection
a frame (o
metry port
a closed
ed loop.”
Examiner
by the Ex
eometry p
eld
ms 5, 10, 1
refore, in
1 as the
of these
uter elem
ion. Ans.
shape geom
Ans. 6.
is reprodu
aminer de
ortion.”
2, and 14
accordance
claims, an
ents 13,
3-4. Mor
etry
ced infra:

picts

d
e

Appeal 2011-008766
Application 11/873,058

4
Appellants argue the Examiner’s interpretation “that the area enclosed
by the Feld frame is the ‘closed shape geometry portion’ as recited in claim
1 . . . . is not a reasonable interpretation . . . in light of [Appellants’]
disclosure,” because referring to the elected embodiment of Figure 9h, “[t]he
area enclosed by a closed shape geometry portion 54 is different from the
interior space enclosed by the frame 40.” App. Br. 7-8. In other words,
Appellants argue that “[t]he language of claim 1 further distinguishes
between the interior space enclosed by the frame and the ‘closed shape
geometry portion’ that forms a part of the frame,” and “[t]he interpretation
asserted by the Examiner effectively removes the ‘closed shape geometry
portion’ limitation from claim 1 by interpreting the ‘frame’ to be the ‘closed
shape geometry portion.’” Ans. 8-9.
We are not persuaded by Appellants’ arguments. Claim 1 recites that
“the frame includes at least one closed shape geometry portion, the frame
has a first configuration enclosing a first area . . . and the frame expands to a
second configuration enclosing a second area larger than the first area . . . ,
the closed shape geometry portion having a different area in the second
configuration than in the first configuration.” There is nothing in claim 1’s
language that requires “a separate ‘closed shape geometry portion’ that is
included in the ‘frame,’” as argued by Appellants. App. Br. 9. Emphasis
added. Appellants’ reliance on “the ‘frame’ and the ‘closed shape geometry
portion’ [being] separately recited” in claim 1 does not preclude the
Examiner’s interpretation that the frame is the closed shape geometry
portion, because the claim recites the frame includes the closed shape
geometry portion. Id. Thus, Appellants have not apprised us of error in the
Examiner’s rejection.
App
App

claim
§ 10
Clai

porti

2 are
How
bein
from
clari
corre
argu
Exam
A po
Exam
eal 2011-0
lication 11
Accordin
1, and cl
2(e) as ant
m 4
Claim 4
on is colla
The Exa
moot bec
ever, we n
g argued o
claim 4.
fy that the
ctly refer
ments will
The Exa
iner’s ann
rtion of Fe
iner’s int
08766
/873,058
gly, we su
aims 5, 10
icipated by
depends fr
psible to e
miner stat
ause claim
ote that al
n pages 9-
Additiona
“argumen
to depende
be addres
miner’s an
otated Fig
ld’s Figur
erpretation
stain the E
, 12, and 1
Feld.
om claim
nlarge the
es that App
2 is withd
though Ap
10 of the A
lly, in the R
ts found o
nt claim 4
sed as they
notated po
ure 6 of F
e 4 (left) h
of what c
5
xaminer’
4 which fa
1 and reci
frame are
ellants’ a
rawn from
pellants in
ppeal Bri
eply Brie
n pages 9-
.” Reply
apply to
rtion of F
eld (right)
as been an
onstitutes
s rejection
ll therewi
tes “the cl
a.” App. B
rguments w
consider
advertent
ef, they qu
f on page
10 of the A
Br. 12. Th
dependent
igure 4 of
are reprod
notated to
the first co
of indepe
th, under 3
osed shape
r., Clms.
ith respe
ation. Ans
ly list claim
ote the lan
12, Appel
ppeal Bri
us, Appel
claim 4.
Feld (left)
uced belo
show the
nfiguratio
ndent
5 U.S.C.
geometry
App’x.
ct to claim
. 9.
2 as
guage
lants
ef should
lants’
and the
w:

n with the

Appeal 2011-008766
Application 11/873,058

6
first area, and Feld’s Figure 6 (right) has been annotated to show the
Examiner’s interpretation of what constitutes the second configuration with
the second area. See Ans. 9-10.
With respect to the portion of Feld’s Figure 4 (left), the Examiner
indicates that “the ‘area” has been interpreted by the Examiner as the interior
area.” Ans. 9. The Examiner also indicates that Feld’s “Figure 6 clearly
disclos[es] that the one closed shape geometry portion of the frame has a
second configuration enclosing a second area because the struts are
expanded and the expansion creates a second area completely different
tha[n] the first area shown in Figure 4.” Id. (citing to the “shaded struts”).
The Examiner then states that “[t]he areas are different because the struts
have a different configuration, different shape, (that’s the only limitations
that the Appellant’s representative is claiming).” Id.
Appellants argue that “[t]he Examiner has not shown any collapsing
structure in Feld that would result in an increase in the interior space
enclosed by the frame.” App. Br. 10.
We are persuaded by Appellants’ argument. The Examiner has not
made any findings as to how Feld discloses claim 4’s language of “the
closed shape geometry portion that is collapsible to enlarge the frame area.”
It appears that if the closed shape geometry portion of Feld is collapsed, the
frame area would be decreased, not enlarged.
Accordingly, we do not sustain the Examiner’s rejection of claim 4
under 35 U.S.C. § 102(e) as anticipated by Feld.

App
App

Clai
apart
the r
and c

show
close
Figu
shap
stent
and F
A po
Exam
enclo
eal 2011-0
lication 11
ms 1, 5, 10
Appellan
from inde
epresentat
laims 5, 1
The Exa
n in Figur
d shape g
res 19 and
e geometry
. Ans. 11.
The Exa
igure 20
rtion of D
iner’s int
sed shape
08766
/873,058
Rejection
, 12, and 1
ts have no
pendent c
ive claim t
0, 12, and
miner find
es 19-21 h
eometry po
20 to illus
portion i

miner’s an
of Davidso
avidson’s
erpretation
geometry
II – Antici
4
t presente
laim 1. Se
o decide th
14 fall wi
s that the
as a frame
rtion. An
trate what
n both the
notated po
n (right) a
Figure 19
of what c
portion” a
7
pation bas
d argumen
e App. Br
e appeal o
th claim 1
embodime
(shaded s
s. 5. The
constitute
expanded
rtions of F
re reprodu

(left) has b
onstitutes
nd the fra
ed on Dav
ts for clai
. 10-13. W
f the rejec
.
nt of Davi
truts, 88, 9
Examiner
s the fram
and unexp
igure 19 o
ced below
een annot
the “FRA
me’s first
idson
ms 5, 10, 1
e select c
tion of the
dson’s ste
4, 96 and
annotates
e and the c
anded stat
f Davidso
:
ated to sho
ME includ
configurat
2, and 14
laim 1 as
se claims
nt 79
98) and a
portions o
losed
e of the
n (left)
w the
ing an
ion
,
f

Appeal 2011-008766
Application 11/873,058

8
enclosing the “1st area,” and a portion of Davidson’s Figure 20 (right) has
been annotated to show the Examiner’s interpretation of what constitutes the
“FRAME” and the frame’s second configuration enclosing a “2nd area”
larger than the first area. See Ans. 11.
Appellants set forth essentially the same arguments as discussed supra
with respect to claim 1 and “Rejection I – Anticipation based on Feld” (see
App. Br. 10-13), and for the essentially the same reasons as discussed supra,
we are not persuaded by Appellants’ arguments.
Accordingly, we sustain the Examiner’s rejection of independent
claim 1, and claims 5, 10, 12, and 14 which fall therewith, under 35 U.S.C.
§ 102(e) as anticipated by Davidson.
Claim 4
Claim 4 is discussed supra. The Examiner has not made any findings
as to how Davidson discloses claim 4’s language of “the closed shape
geometry portion that is collapsible to enlarge the frame area.” See Ans. 4-
5, 10-12). Appellants make a similar argument to that discussed supra with
respect to claim 4 and “Rejection I – Anticipation based on Feld.” App. Br.
13. For a similar reason to that discussed supra with respect to claim 4, we
are persuaded by Appellants’ argument. Accordingly, we do not sustain the
Examiner’s rejection of claim 4 under 35 U.S.C. § 102(e) as anticipated by
Feld.

DECISION
We REVERSE the Examiner’s rejections of claim 4 under 35 U.S.C.
§ 102(e) as anticipated by Feld and Davidson, respectively.
Appeal 2011-008766
Application 11/873,058

9
We AFFIRM the Examiner’s rejections of claims 1, 5, 10, 12, and 14
under 35 U.S.C. § 102(e) as anticipated by Feld and Davidson, respectively.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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