Ex Parte Stoltze et alDownload PDFPatent Trial and Appeal BoardAug 28, 201310020592 (P.T.A.B. Aug. 28, 2013) Copy Citation 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. 10/020,592 12/12/2001 Jacob Stoltze 760-46 CIP/PCT/USA/CON 2 6947 7590 08/28/2013 Salvatore J. Abbruzzese HOFFMANN & BARON, LLP 6900 Jericho Turnpike Syosset, NY 11791 EXAMINER EREZO, DARWIN P ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 08/28/2013 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte JACOB STOLTZE and JORGEN KAMSTRUP-LARSEN __________ Appeal 2011-012405 Application 10/020,592 Technology Center 3700 __________ Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and JOHN A. EVANS, Administrative Patent Judges. GREEN, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal1 under 35 U.S.C. § 134 from the Examiner’s rejection of claims 41 and 42.2 We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 The Real Party in Interest is Boston Scientific Scimed, Inc. (App. Br. 2.) 2 Claims 25-35 and 43-46 are also pending, but have been indicated as having allowable subject matter (App. Br. 1). Appeal 2011-012405 Application 10/020,592 2 STATEMENT OF THE CASE Claim 41 is the only independent claim on appeal, and reads as follows: 41. A method of forming a stent delivery device comprising the steps of: providing a catheter having an inflatable portion; placing a stent on the inflatable portion; and releasably retaining said stent to said inflatable portion by depressions formed therein. The following ground of rejection is before us for review: Claims 41 and 42 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Wiktor3 (Ans. 3). As Appellants do not argue the claims separately, we focus our analysis on claim 41, and claim 42 stands or falls with that claim. 37 C.F.R. § 41.37(c)(1)(vii). ANALYSIS The Examiner rejects claims 41 and 42 as being anticipated by Wiktor (Ans. 3-4). Relying on Figure 2 of Wiktor, the Examiner finds that the stent is releasably retained by depressions formed on the inflatable portion of the balloon catheter (id. at 4). The Examiner finds that the “process of crimping the stent into the balloon depresses a portion of that balloon, as shown in the above mentioned stress lines in Fig. 2 and Fig. 4 (note that inflatable balloon is no longer smooth in the areas where the stent has been crimped on)” (id. at 4-5). Appellants argue that “the stent of Witkor is not releasably retained by depressions formed in the Witkor balloon (inflatable portion)” (App. Br. 4). 3 Wiktor, US 4,969,458, issued Nov. 13, 1990. App App App mate relea the “ the b gripp antic limit refer 1361 (Wik Figu fitted Figu the b slipp 3, ll. crim eal 2011-0 lication 10 ellants ass rial of the sably reta method of alloon into ing of the We conc ipation. “ ation is fo ence.” Ce (Fed. Cir Wiktor t tor, col. 1 re 2 “is a s over a de re, the “rev alloon to p ing off the 24-28). W ping of the 12405 /020,592 ert that wh balloon in ined by the the presen which th stent to fr lude that t It is well s und either leritas Tec . 1998). eaches the , ll. 7-16). ide elevat flated ball ersing loo rovide en balloon 7 e agree w stent to th ile portion , there is n depressio t inventio e stents re ictionally he Examin ettled that expressly hs. Ltd. v. placemen Figure 2 o ion showin oon” (id. a ps 6 of ste ough fricti during tra ith the Ex e balloon 3 of the ste o disclosu ns (id. at 5 n relies on side,” whe retain the er has set a claim is or inheren Rockwell t of a stent f Wiktor g an overa t col. 3, ll nt 1 are li on to prev nsportatio aminer tha results in nt of Witk re in Witk ). Accord actual dep reas “Witk stent on th forth a pri anticipate tly in a sin Int’l Corp on an inf is reprodu ll view of . 66-68). A ghtly crim ent stent 1 n and dep t the Figu depression or may pu or that the ing to Ap ressions f or relies o e balloon” ma facie c d if each a gle prior a ., 150 F.3 latable bal ced below a stent pr s shown ped so tha from slid loyment” ( re shows t s where th sh the stent is pellants, ormed in n light (id.). ase of nd every rt d 1354, loon . osthesis in the t they grip ing and id. at col. hat the e Appeal 2011-012405 Application 10/020,592 4 reversing loops 6 have been crimped to allow for the balloon to be gripped by the stents, thus preventing the stent from slipping or sliding off the balloon. During prosecution before the Office, claims are to be given their broadest reasonable interpretation consistent with the Specification as it would be interpreted by one of ordinary skill in the art. In re American Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004). “An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Moreover, it is during prosecution that applicants have “the opportunity to amend the claims to obtain more precise claim coverage.” American Academy, 367 F.3d at 1364. Claim 41 recites “releasably retaining said stent to said inflatable portion by depressions formed therein.” There is nothing in the claim language that excludes forming of depressions by crimping as taught by Wiktor, such that the stent is also frictionally retained on the balloon. Stated differently, the stent of Wiktor is releasably retained in the depressions formed by crimping the loops of the stent, as well as the friction provided by the gripping of the stent provided by the crimping. We therefore affirm the anticipation rejection of claim 41, and claim 42 falls with that claim. Appeal 2011-012405 Application 10/020,592 5 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED cdc Copy with citationCopy as parenthetical citation