Ex Parte Steinke et al

Board of Patent Appeals and Interferences

Jan 31, 2012

11680532 (B.P.A.I. Jan. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte THOMAS A. STEINKE, DONALD H. KOENIG, and
JOAN ZELTINGER
____________________

Appeal 2009-014429
Application 11/680,532
Technology Center 3700
____________________

Before: KEN B. BARRETT, PHILLIP J. KAUFFMAN, and
WILLIAM V. SAINDON, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2009-014429
Application 11/680,532
2
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1-4. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1, reproduced below, is illustrative of the claimed subject matter.
1. An expandable stent, comprising a tubular member
having a circumference and a longitudinal axis, and comprising
at least two annular modules, wherein each annular module
comprises at least two circumferentially-adjacent radial
elements, wherein each radial element comprises an
engagement slot through which a portion of the
circumferentially-adjacent radial element is slidably engaged,
such that the tubular member is capable of expanding from a
first collapsed diameter to a second expanded diameter, wherein
no radial element overlaps with itself in the second expanded
diameter, and wherein the engagement slot does not comprise
paired slots.

Rejections
I. Claims 1-4 are rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
II. Claims 1-4 are rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
III. Claims 1-4 are rejected under 35 U.S.C. § 102(b) as anticipated by
Chobotov (US 6,132,457, iss. Oct. 17, 2000).

SUMMARY OF DECISION
We AFFIRM.

Appeal 2009-014429
Application 11/680,532
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OPINION
Indefiniteness
Paired Slots – Independent Claim 1
Applicants use herein and explicitly define the term
“paired slots” to mean two adjacent, substantially
parallel slots, slits, cuts, incisions, openings, etc. in a
first stent component, which are configured to engage a
second stent component in a weave-like connection 82,
as illustrated in FIGS. 15G, wherein the second
component passes through both slots in the pair 30.
Specification, para. [0076] (emphasis added).

The Examiner acknowledges that the Specification defines “paired
slots,” but nevertheless found that the two slots 36 in figure 2A of
Appellants’ drawings are “configured and fully capable of fulfilling the
functional language of engaging a second stent component in a weave-like
connection.” Ans. 6 (emphasis removed). On this basis, the Examiner
found claim 1 indefinite.
Appellants argue that the two slots in figure 2A of Appellants’
drawings are not “paired slots” as claimed and defined in the Specification.
Reply Br. 4-5. We agree, because slots 36 are not substantially parallel to
one another, as required by the special definition in paragraph [0076], but
rather separated and along the same line.
Accordingly, we find that the term “paired slots” is defined in the
Specification and conclude that the claim is not ambiguous. As such, we do
not sustain the Examiner’s rejection of claims 1, 2, and 4.

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Longitudinal Backbone – Dependent Claim 3
The Examiner found claim 3 indefinite because, although the claim
recites a stent that “does not comprise a longitudinal backbone,” Appellants’
Specification nevertheless describes the invention as having a longitudinal
backbone. Ans. 6-7. In other words, the Examiner found claim 3 to be
inconsistent with the Specification. See In re Cohn, 438 F.2d 989, 993
(CCPA 1971) (sustaining rejection of claims under 35 U.S.C. § 112, second
paragraph, as being indefinite when the claims were inherently inconsistent
with the description, definitions, and examples appearing in applicant’s
specification). The backbone of the present invention, as identified by the
Examiner, is made from the longitudinal components 40 (a “linkage element
… used to couple radial elements”, para [0044]), 140 (also called linkage
elements), or the components linked as shown in figure 7 of the
Specification. Ans. 4, 6-7.
Appellants argue that the Specification describes how the prior art
reference Fordenbacher has a backbone and the present invention does not
have that backbone. App. Br. 15-16; Reply Br. 5-6. However, this is merely
an example of a backbone and the claims are not directed to the specific
structure of Fordenbacher’s backbone. Appellants do not point to, nor do we
find, the Specification to specifically define the term “longitudinal
backbone.” As such, we find the Examiner’s interpretation of “longitudinal
backbone” – “a plurality of radial elements which are connected together
longitudinally” – reasonable and consistent with the term as used in the
Specification. See Ans. 4 (setting forth the Examiner’s interpretation of
backbone); Spec., fig. 7 (depicting a plurality of radial elements connected
together longitudinally)
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The limitation of claim 3 requiring the absence of a longitudinal
backbone is inconsistent with the description, definitions, and examples of
the Specification, which describes the claimed invention having a
longitudinal backbone. We agree with the Examiner that “one having
ordinary skill in the art cannot reasonably delineate between a stent having a
longitudinal backbone and a stent not having a longitudinal backbone.” Ans.
6. Accordingly, we sustain the Examiner’s rejection of claim 3 as indefinite.

Enablement
Appellants challenge the Examiner’s enablement rejection of claims
1-4. App. Br. 16-19; Reply Br. 6-7. In these rejections, the Examiner makes
no attempt to explain why it would require undue experimentation for one of
ordinary skill in the art to make and/or use the invention. Ans. 3-4. For
example, the Examiner does not address any of the Wands factors. See In re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Accordingly, we do not sustain
the Examiner’s rejection of claims 1-4 as lacking enablement.

Anticipation by Chobotov
Stent Diameter
The Examiner found that the stent in Chobotov is capable of
expanding from a first diameter to a second diameter. Ans. 4-5, 7-8.
Appellants argue that the diameter in Chobotov is in fact fixed. See, e.g.,
App. Br. 21.
We appreciate Appellants’ argument that when viewed in certain
orientations, the diameter of Chobotov’s stent could be considered fixed.
See Reply Br. 8. Chobotov, however, explicitly states that the device, when
in the elongated state (see, e.g., fig. 1 vs. fig. 7), has a decreased cross
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section at any given point along the stent, allowing it to be loaded into a
smaller diameter delivery catheter. Col. 3, ll. 62-67. In other words,
Chobotov describes the device achieving a smaller diameter when elongated.
The claim does not preclude measuring the diameter of a stent (and thus,
determining if it is capable of expanding) only when viewed from a certain
perspective or deployed in a certain configuration. Accordingly, the
Examiner’s finding that the stent in Chobotov is capable of expanding from
a first diameter to a second diameter is supported by a preponderance of the
evidence.
Engagement Slot
The Examiner found that the slot (see, e.g., fig. 4, items 45, 48) of
Chobotov anticipates the slot of claims 1-4. Ans. 4, 8. Appellants argue that
the female member 45 of the slot in Chobotov only partially engages the
male member 48 and thus fails to be an “engagement slot” in view of their
definition of “engagement slot.” App. Br. 21-22; Reply Br. 10-11; see
Spec., para. [0079] (allegedly containing a definition of “engagement slot”).
Paragraph [0079] states:
The opening 29 in Mueller is not a “slot” or an
“engagement slot” as that term is used by
Applicants - i.e., an opening, cut, slit, incision, etc.
in a material such that an element engaged through
the slot is captured on all sides within the plane of
the material and can only slide through the
opening.

Even using Appellants’ proffered definition of “engagement slot,” we
agree with the Examiner’s finding that Chobotov describes such a slot.
When looking at the perspective shown in figure 4, Chobotov depicts an
opening 45 such that an element 48 engaged in the plane of the slot 45 as
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shown is captured on all four sides within that plane and can only slide
through the opening (i.e., male member 48 could not move in any direction
along the plane of the material opening except in or out of the opening 45).
While portion 44 of male member 48 protrudes from one side of the slot, the
member 48 is nevertheless captured in that direction because it is restricted
from movement in that direction by the arms of opening 45.
Accordingly, the Examiner’s finding that Chobotov describes an
“engagement slot” is supported by a preponderance of the evidence.
In view of Appellants’ arguments, we do not find error in the
Examiner’s anticipation rejection of claims 1-4. However, we cannot
sustain the Examiner’s rejection of claim 3 because it is necessarily
predicated on a speculative assumption as to the meaning of the claim. See
In re Steele, 305 F.2d 859, 862-63 (CCPA 1962).

DECISION
We sustain the 35 U.S.C. § 112, second paragraph, rejection of claim
3 and the § 102(b) rejection of claims 1, 2, and 4.
We do not sustain the § 112, second paragraph, rejection of claims 1,
2, and 4; the § 112, first paragraph, rejection of claims 1-4; and the § 102(b)
rejection of claim 3.
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

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