Ex parte Miksza

Board of Patent Appeals and Interferences

Apr 26, 2000

08515344 (B.P.A.I. Apr. 26, 2000)

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for publication in a law journal and (2) is not binding precedent of the Board.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. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ANTHONY S. MIKSZA
____________
Appeal No. 1997-4292
Application No. 08/515,344
____________
HEARD: April 5, 2000
____________
Before McCANDLISH, Senior Administrative Patent Judge, NASE and
GONZALES, Administrative Patent Judges.
NASE, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1 to 5, which are all of the claims
pending in this application.
We AFFIRM-IN-PART.
BACKGROUND
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Application No. 08/515,344
The appellant's invention relates to stents for placement
within lumens of the body (specification, p. 1). A copy of
the claims under appeal is set forth in the appendix to the
appellant's brief (Paper No. 10, filed September 16, 1996).
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Pinchasik et al. 5,449,373 Sept. 12,
1995
(Pinchasik) (filed Mar. 17,
1994)
Claims 1 to 5 stand rejected under 35 U.S.C. § 102(e) as
being anticipated by Pinchasik.
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 11,
mailed October 4, 1996) for the examiner's complete reasoning
in support of the rejection, and to the brief for the
appellant's arguments thereagainst.
Appeal No. 1997-4292 Page 3
Application No. 08/515,344
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art reference, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
Initially we note that anticipation by a prior art
reference does not require either the inventive concept of the
claimed subject matter or the recognition of inherent
properties that may be possessed by the prior art reference.
See Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 633,
2 USPQ2d 1051, 1054 (Fed. Cir.), cert. denied, 484 U.S. 827
(1987). A prior art reference anticipates the subject of a
claim when the reference discloses every feature of the
claimed invention, either explicitly or inherently (see Hazani
v. Int'l Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358,
1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital Data
Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.
Cir. 1984)); however, the law of anticipation does not require
Appeal No. 1997-4292 Page 4
Application No. 08/515,344
that the reference teach what the appellants are 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)).
Appeal No. 1997-4292 Page 5
Application No. 08/515,344
Claims 1 to 4
We will not sustain the rejection of claims 1 to 4 under
35 U.S.C. § 102(e).
Claims 1 to 4 recite a stent comprising, inter alia, a
plurality of expandable cells wherein said cells are arranged
circumferentially about the stent so that the stent when in an
unexpanded condition has a generally cylindrical construction;
and at least one of the expandable cells containing a metal
bridge therein wherein the bridge is initially arranged in a
folded condition in the cell and wherein when the cells
expand, the bridge lengthens to a generally straight
configuration, such that the straightened bridge forms an arc
of a circle about the expanded cylindrical stent.
Pinchasik discloses an articulated stent. As shown in
Figures 2a-2c, the articulated stent, generally designated
100, generally comprising a number of substantially rigid
segments 102 connected by connectors 110. Segments 102
present a fine diamond mesh of interconnected diamond shaped
cells 108 having 1 mm sides on expansion as best seen in
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Application No. 08/515,344
Figure 2c. Depending on the intended diameter of stent 100,
segments 102 typically comprise
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Application No. 08/515,344
between 8-24 diamond shaped cells 108. Connectors 110
comprise links 112 connecting a front end 104 to a tail end
106 of adjacent segments 102. Links 112 preferably extend in
a substantially helical fashion between apexes of diamond
shaped cells 108 at front and rear ends 104 and 106 of
adjacent segments 102 such that the number of links 112 equals
the number of cells
108. Links 112 are preferably evenly deployed around
perimeters of segments 102 such that connectors 110 can be
equally flexed in any direction and to provide continuous and
uniform support to both straight and curved portions of a
bodily conduit.
Pinchasik teaches that alternate connectors 110 at front
and rear ends 104 and 106, respectively, of a segment 102
preferably have links 112 wound in clockwise and counter
clockwise
directions. Alternately winding connectors 110 ensures that
the rotational displacement of links 112 and adjacent segments
102 relative to the walls of a blood vessel and more
importantly the balloon of its delivery system is minimized
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Application No. 08/515,344
when stent 100 is expanded. Pinchasik also teaches that it is
a particular feature of his invention that connectors 110 have
a generally cylindrical configuration when stent 100 is
relaxed as best seen in Figure 2a and a differentially
stretched and compressed curved configuration when stent 100
is flexed as best seen in Figure 2b. The flexed configuration
is brought about by two relatively
opposing displacements of links 112. First, the differential
stretching of connectors 110 occurs at the convex portion
thereof denoted 114 by links 112 being displaced away from one
another. Second, the differential compressing of connectors
110 occurs at the concave portion thereof denoted 116 by links
112 being displaced towards one another. Stent 100 has a
constricted diameter for delivery through a curved bodily
conduit as shown in Figures 2a and 2b and an expanded diameter
as shown in Figure 2c for supporting a bodily conduit. Stent
100 is preferably fabricated from low memory, more plastic
than elastic, bio-compatible material, for example, stainless
steel 316L, gold,
tantalum, etc. which enables it to be plastically deformed
from its constricted diameter to its expanded diameter. The
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Application No. 08/515,344
constricted and expanded diameters of stent 100 typically fall
in the ranges of 1.0-3.5 mm and 3.5-10.0 mm, respectively.
The examiner's position with respect to claims 1 to 4 is
that Pinchasik discloses a stent with a plurality of
expandable cells with a folded bridge in at least one cell.
The examiner states that
Fig. 2C best shows the bridges which are considered by
the examiner to be the upper and lower side segments of
the diamonds in the middle of the stent. The examiner
notes that in Figs. 2A, 2B, the bridges are initially
arranged in a folded condition. A "cell", as interpreted
by the examiner, is best shown in Fig. 2C, but it would
be present in Figs. 2A and 2B also. A "cell" is
considered by the examiner to be two adjacent diamonds
and the elongated rectangular section on either side of
the intersection point of the two diamonds. Thus as seen
by the examiner, each "cell" contains two adjacent
bridges that are connected together at their middle. It
is an inherent function of the stent and bridges that if
the stent is expanded far enough, the bridges will
straighten out and form a continuous ring around the
middle of the stent.
The appellant argues (brief, p. 2) that Pinchasik lacks
the claimed "bridge" which initially starts in a folded
condition and which expands (i.e., lengthens) to form an arc
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Application No. 08/515,344
When relying upon the theory of inherency, the examiner1
(continued...)
of a circle. The appellant also argues (brief, pp. 2-3) that
the examiner has not
presented any evidence that the claimed "bridge" is inherent
in Pinchasik.
After careful consideration of the respective positions
articulated by the appellant and the examiner and the
teachings of Pinchasik we find ourselves in agreement with the
appellant's position that claims 1 to 4 are not anticipated by
Pinchasik. In that regard, it is our determination that the
"bridge" identified by the examiner within the "cells" of
Pinchasik does not lengthen to form an arc of a circle as
recited in claims 1 to 4. At best, the "bridge" identified by
the examiner within the "cells" of Pinchasik lengthens to form
an arc of an ellipse. Additionally, the examiner's position
that it is inherent that if Pinchasik's stent is expanded far
enough, the bridges will straighten out and form a continuous
ring around the middle of the stent is shear speculation
without any support within the disclosure of Pinchasik.1
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Application No. 08/515,344
(...continued)1
must provide a basis in fact and/or technical reasoning to
reasonably support the determination that the allegedly
inherent characteristic necessarily flows from the teachings
of the applied prior art. See Ex parte Levy, 17 USPQ2d 1461,
1464 (Bd. Patent App. & Int. 1990).
For the reasons set forth above, the decision of the
examiner to reject claims 1 to 4 under 35 U.S.C. § 102(e) is
reversed.
Claim 5
We sustain the rejection of claim 5 under 35 U.S.C.
§ 102(e).
Claim 5 reads as follows:
A stent comprising a plurality of expandable cells,
and at least one of said cells having an expansion
limiting bridge contained therein, said bridge causing
said cell to have a finite expansion limit in one lateral
dimension.
The examiner's position with respect to claim 5 is that
Pinchasik discloses a stent with a plurality of expandable
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Application No. 08/515,344
cells with a folded bridge in at least one cell. The examiner
states that
the short segments at the ends of the stent are
considered by the examiner to be bridges and are
considered to be within the cell. Assuming, arguendo,
they are not within the cell rejection above relating to
claim 1 also rejects claim 5 (i.e., the bridges interior
to the outside bridges are contained within the cells as
the cell is defined in claim 1 above.
The appellant argues (brief, p. 3) that Pinchasik lacks
the claimed "bridge" which causes a cell to have a finite
expansion limit in one lateral dimension.
This time, after careful consideration of the respective
positions articulated by the appellant and the examiner and
the teachings of Pinchasik we find ourselves in agreement with
the examiner's position that claim 5 is anticipated by
Pinchasik. In that regard, it is our determination that the
"bridge" identified by the examiner would inherently causes a
cell to have a finite expansion limit in one lateral
dimension. This would be due to the fact that Pinchasik's
stent is preferably fabricated from low memory, more plastic
than elastic, bio-compatible material, for example, stainless
Appeal No. 1997-4292 Page 13
Application No. 08/515,344
steel 316L, gold, tantalum, etc. which enables it to be
plastically deformed from its constricted diameter to its
expanded diameter. In our view, this basis in fact and/or
technical reasoning is sufficient to reasonably support the
determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art.
See Ex parte Levy, supra.
After the PTO establishes a prima facie case of
anticipation based on inherency, the burden shifts to the
appellant to prove that the subject matter shown to be in the
prior art does not possess the characteristics of the claimed
invention. See In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964,
966 (Fed. Cir. 1985); In re King, 801 F.2d 1324, 1327, 231
USPQ 136, 138 (Fed. Cir. 1986). The appellant has not come
forward with any evidence to satisfy that burden. Compare In
re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA
1977); In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566-67
(CCPA 1971). In that regard, the appellant's mere argument on
page 3 of the brief that Pinchasik lacks the claimed "bridge"
which causes a cell to have a finite expansion limit in one
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Application No. 08/515,344
lateral dimension is not evidence. See In re Pearson, 494
F.2d 1399, 1405, 181 USPQ 641, 646 (CCPA 1974)(attorney's
arguments in a brief cannot take the place of evidence).
For the reasons set forth above, the decision of the
examiner to reject claim 5 under 35 U.S.C. § 102(e) is
affirmed.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1 to 5 under 35 U.S.C. § 102(e) is affirmed with
respect to claim 5 but reversed with respect to claim 1 to 4.
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Application No. 08/515,344
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
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge
)
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN F. GONZALES )
Administrative Patent Judge )
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AUDLEY A. CIAMPORCERO JR.
ONE JOHNSON & JOHNSON PLAZA
NEW BRUNSWICK, NJ 08933-7003
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JVN/ks