Ex Parte Skubitz et al

Board of Patent Appeals and Interferences

Mar 29, 2011

10341865 (B.P.A.I. Mar. 29, 2011)

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.
10/341,865 01/14/2003 Sean P. Skubitz S63.2-9286-US02 9946
490 7590 03/30/2011
VIDAS, ARRETT & STEINKRAUS, P.A.
SUITE 400, 6640 SHADY OAK ROAD
EDEN PRAIRIE, MN 55344
EXAMINER
BUI, VY Q
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
03/30/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SEAN P. SKUBITZ AND BURNS P. DORAN
____________

Appeal 2009-009957
Application 10/341,865
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEVEN D.A. McCARTHY, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-009957
Application 10/341,865

STATEMENT OF THE CASE
Sean Skubitz and Burns Doran (Appellants) appeal under 35 U.S.C.
§ 134 from the Examiner's decision finally rejecting under 35 U.S.C.
§ 102(b) claims 25-32 as anticipated by Frantzen (US 5,843,175, issued
Dec. 1, 1998). Claims 1-24 have been canceled. Claims 33-44 have been
withdrawn from consideration by the Examiner. We have jurisdiction over
this appeal under 35 U.S.C. § 6.1

THE INVENTION
Appellants’ invention relates to a stent including a plurality of
serpentine portions having at least one peak and one trough, wherein at least
some of the serpentine portions advance discontinuously in a substantially
longitudinal path about a longitudinal axis of the stent. Spec. 4, para. [0014]
and fig. 7.
Claim 25, the sole independent claim, is representative of the claimed
invention and reads as follows:

25. A stent having an open-ended tubular shape defined by a
structure comprising a plurality of serpentine portions, each
serpentine portion having at least one peak and one trough, at
least some of the serpentine portions advancing discontinuously
in a substantially longitudinal path about a longitudinal axis of
the stent to form a discontinuous band extending in a
substantially lengthwise direction.

1 Throughout this Opinion we refer to the Appeal Brief filed on Sep. 29,
2006 as “App. Br.”, to the Reply Brief filed on Feb. 27, 2007 as “Reply Br.”,
and to the Examiner’s Answer mailed on Jan. 4, 2007 as “Ans.”.
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Application 10/341,865

SUMMARY OF DECISION
We AFFIRM, but denominate our affirmance as a NEW GROUND
OF REJECTION.

OPINION
Appellants argue that the serpentine portions AB, BC and CD (see
Ans. 4), “advance continuously because they are all connected,” which is in
contrast to “at least some serpentine portions advancing discontinuously,” as
required by independent claim 25. App. Br. 6. See also App. Br., Claims
Appendix. In response, the Examiner takes the position that, “each of
serpentine portions AB, BC [and] CD . . . can be considered as portions
advancing discontinuously or in a discontinuous manner because there are
changes in shape/pattern between these portions (from curved shape B′B to
straight shape BR, [Frantzen’s] Fig. 3).” Ans. 5-6. Appellants counter that
Appellants’ Specification does not define the phrase “portions advancing
discontinuously,” as recited in claim 25, to mean “changes in shape/pattern
between these portions.” Reply Br. 2. See also App. Br., Claims Appendix.
Rather, Appellants argue that the definition of the term “discontinuous” that
is most consistent with Appellants’ Specification is “not continuous; broken;
interrupted; intermittent.” Reply Br. 3. Hence, according to Appellants, the
claimed serpentine portions advance “discontinuously because they are not
continuous.” Id.
We begin our analysis by construing the phrase “serpentine portion.”
An ordinary and customary meaning of the term “serpentine” is “a winding
or turning one way and another.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (11th ed. 2005). Pointing to a portion of Figure 7 of Appellants’
Drawings, Appellants depict a “serpentine portion 506.” App. Br. 8. As
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such, in view of the ordinary and customary meaning of the term
“serpentine,” and consistent with the Specification we construe the phrase
“serpentine portions” to mean portions that turn one way and another.
Accordingly, as can be seen below in annotated Figure 3 of Frantzen, we
find that Frantzen teaches serpentine portions M′A´B´B, RB″C´C, RQPM,
and R′P′N′N.
An annotated Figure 3 of Frantzen is reproduced below:

Annotated Figure 3 of Frantzen depicts serpentine portions M′A´B´B,
RB″C´C, RQPM, and R′P′N′N.
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We continue our analysis by noting that Appellants’ Specification
does not expressly define the term “discontinuous” or otherwise indicate that
this term is used in a manner other than its ordinary and customary meaning.
Claims are to be given their broadest reasonable interpretation consistent
with the specification. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359,
1364 (Fed. Cir. 2004). Although we appreciate Appellants’ proffered
definition of the term “discontinuous,” nonetheless, like the Examiner, we
find that an ordinary and customary meaning of the term “discontinuous” is
“1 b : lacking sequence or coherence.” MERRIAM WEBSTER’S COLLEGIATE
DICTIONARY (11th ed. 2005). As such, we construe the term
“discontinuously,” as applied to serpentine portions of Appellants’ claimed
stent, to mean lacking sequence or coherence. “If more than one dictionary
definition is consistent with the use of the words in the intrinsic record, the
claim terms may be construed to encompass all such consistent meanings.”
Tex. Digital Sys., Inc. v. Telegenix, Inc., 308 F.3d 1193, 1203 (Fed. Cir.
2002)
Claim 25 requires “a plurality of serpentine portions” with “at least
some of the serpentine portions advancing discontinuously.” App. Br.,
Claims Appendix. In this case, the Examiner found, and we agree, that
Frantzen teaches a stent having an open-ended tubular shape, including a
plurality of serpentine portions having at least one peak B´ and one trough
A´, wherein serpentine portions M´A´B´B and RB″C´C exhibit a break in
sequence at BR (at least some of the serpentine portions advance
discontinuously). See Ans. 5-6. We further note that serpentine portions
M′A´B´B, RQPM, and R′P′N′N are separated by gaps, that is, are not
continuous (broken, intermittent). See Ans. 3. Hence, we find that the lack
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of sequence of serpentine portions M´A´B´B and RB"C´C at BR or the lack
of continuity between serpentine portions M′A´B´B, RQPM, and R′P′N′N in
Frantzen’s stent constitutes “at least some of the serpentine portions
advancing discontinuously,” as called for by independent claim 25.
Appellants further argue that, “[a]dvancement along a ‘substantially
longitudinal path,’ as recited [in] claim 25, requires that essentially all
advancement be in a longitudinal direction”; whereas, “portions AB, BC,
and CD [of Frantzen] take a path that is nearly as much along the
circumferential axis as it is [the] longitudinal axis.” App. Br. 7. Emphasis
added. See also Ans. 4. However, as shown in the Annotated Figure 3 of
Frantzen above, serpentine portions M′A´B´B, RQPM, and R′P′N′N advance
discontinuously (break in sequence at BR and MR´ and advancement from
one to the next) in a substantially longitudinal path about the longitudinal
axis of the stent (axis extending from reference numbers 60 to 70), as called
for by claim 25. See Ans. 3.
Accordingly, for the foregoing reasons, the rejection of independent
claim 25 under 35 U.S.C. § 102(b) as anticipated by Frantzen is sustained.
With respect to dependent claims 26-32, Appellants do not make any
additional arguments. See App. Br. 8. Accordingly, the rejection of claims
26-32 as anticipated by Frantzen is likewise sustained. However, because
our reasoning in affirming the Examiner’s decision differs from that
articulated by the Examiner in the rejection, we denominate our affirmance
as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b).

DECISION
The decision of the Examiner is affirmed as to claims 25-32.
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This decision contains a new ground of rejection pursuant to
37 C.F.R. § 41.50(b). 37 C.F.R. ' 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the proceeding
will be remanded to the examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same record. . . .
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).

AFFIRMED; 37 C.F.R. § 41.50(b)

mls

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