Ex Parte 7942922 et alDownload PDFPatent Trial and Appeal BoardSep 26, 201495001769 (P.T.A.B. Sep. 26, 2014) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 95/001,769 09/20/2011 7942922 P33851US00/25216.028 9877 31292 7590 09/26/2014 CHRISTOPHER & WEISBERG, P.A. 200 EAST LAS OLAS BOULEVARD SUITE 2040 FORT LAUDERDALE, FL 33301 EXAMINER WEHNER, CARY ELLEN ART UNIT PAPER NUMBER 3993 MAIL DATE DELIVERY MODE 09/26/2014 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 ____________________ BOSTON SCIENTIFIC CORP. Requester v. ORBUSNEICH MEDICAL, INC. Patent Owner/Appellant ____________________ Appeal 2014-006853 Reexamination Control 95/001,769 US Patent No. 7,942,922 B21 Technology Center 3900 ____________________ Before STEVEN D.A. McCARTHY, DANIEL S. SONG, and BRETT C. MARTIN, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL 1 Issued on May 17, 2011 to Addonizio et al. (hereinafter referred to as the '922 patent). Appeal 2014-006853 Reexamination Control 95/001,769 US Patent No. 7,942,922 B2 2 STATEMENT OF THE CASE Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315(a) from the Examiner’s rejection of claims 1-20. We have jurisdiction under 35 U.S.C. §§ 134(c) and 315(b). We are informed that the '922 patent was the subject of litigation in the U.S. District Court for the District of Massachusetts in a case captioned OrbusNeich Medical Co. Ltd., BVI and OrbusNeich Medical, Inc. v. Boston Scientific Corp., 1:09-cv-10962 (RGS), which was dismissed with prejudice on October 3, 2013. Br. 2. We further note that the '922 patent is related to U.S. Patent No. 7,967,852 B2, which is the subject of an inter partes reexamination, Reexamination Control 95/001,768, which is also being appealed as appeal number 2014-006675. We AFFIRM. THE INVENTION Appellant’s invention is directed to "stents having helical elements and to methods for manufacturing the stents of the present invention." Spec., col. 1, ll. 24-26. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. An expandable stent, comprising: a plurality of adjacent cylindrical elements connected to one another by a plurality of connecting elements; each cylindrical element including a plurality of first circumferential segments, each first circumferential segment extending between two connecting elements and including five linear segments; Appeal 2014-006853 Reexamination Control 95/001,769 US Patent No. 7,942,922 B2 3 each cylindrical element including a plurality of second circumferential segments, each second circumferential segment extending between two connecting elements and including three linear segments; the first and second circumferential segments alternating with one another in each cylindrical element; wherein the first circumferential segments of adjacent cylindrical elements are offset from each other to form a first helical segment consisting of a plurality of the first circumferential segments alternating with a plurality of the connecting elements; and wherein the second circumferential segments of adjacent cylindrical elements are offset from each other to form a second helical segment including a plurality of second circumferential segments alternating with a plurality of the connecting elements. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Burmeister Brown Von Oepen2 Sabaria Roussigne Neuss3 US 6,582,461 B1 US 7,204,848 B1 DE 297 02 671 U1 EP 0 876 806 A1 WO 99/39660 A1 WO 00/71053 A1 June 24, 2003 Apr. 17, 2007 (filed Nov. 20, 1998) May 22, 1997 Nov. 11, 1998 Aug. 12, 1999 Nov. 30, 2000 2 English language translations of Von Oepen, Sabaria, and Roussigne may be found in the file of the reexamination proceeding. 3 Corresponding U.S. Patent No. 7,070,614 B2, issued July 4, 2006, may be found in the file of the reexamination proceeding. Appeal 2014-006853 Reexamination Control 95/001,769 US Patent No. 7,942,922 B2 4 THE REJECTIONS ON APPEAL The Examiner made the following rejections: 1. Claims 1-4, 6-11, 13, 14, and 16-20 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Brown. Right of Appeal Notice (hereinafter “RAN”) 10. 2. Claims 1-6, 8-13, and 16-19 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Sabaria. RAN 12. 3. Claims 1-4, 6, 8-11, 13, and 16-18 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Von Oepen. RAN 13. 4. Claims 1-4, 6-11, 13, 14, 16-18, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Burmeister. RAN 14. 5. Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Roussigne. RAN 16. 6. Claim 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Nuess. RAN 17. 7. Claims 1-6, 8-13, and 16-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sabaria and Burmeister. RAN 18. 8. Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sabaria and Roussigne. RAN 19. 9. Claims 15 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Sabaria and Neuss. RAN 20. 10. Claims 5, 12, and 19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen and Roussigne. RAN 21. Appeal 2014-006853 Reexamination Control 95/001,769 US Patent No. 7,942,922 B2 5 11. Claims 7, 14, 15, and 20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen and Neuss. Id. ANALYSIS We adopt and incorporate by reference the Examiner’s findings concerning the disclosures of Brown and Sabaria. See RAN 10-13, incorporating by reference Request for Inter Partes Reexamination (hereinafter “Request”) 31-37 and 60-64. Appellant argues the claims subject to the first ground of rejection as a group. See Br. 6-10.4 Appellant further states, "all of the dependent claims 2-7, 9-15, and 17-20 are deemed to rise and fall with their respective independent claims for the purposes of this appeal." Br. 6. Accordingly, the disposition of the rejections of claims 2-20 turns on our analysis of the rejection of claim 1 and all claims stand or fall with claim 1, which is representative. See 37 C.F.R. § 41.67(c)(1)(vii) (2011). Appellant's main argument regarding Rejection 1 as well as the Examiner's various other rejections is that "[t]he examiner's rejection is erroneous because the examiner's interpretations of the claim limitations are unreasonably broad." Br. 6. Specifically, with respect to claim 1, Appellant argues that the Examiner has improperly modified "the express characterization of the first and second circumferential segments in and of themselves." Br. 9. Appellant further argues that "[t]he correct interpretation of Claims 1 and 8 is that the claimed stent must include, at 4 As used in this opinion, “Br.” shall refer to the Appeal Brief dated November 13, 2013. Appeal 2014-006853 Reexamination Control 95/001,769 US Patent No. 7,942,922 B2 6 least, first and second circumferential segments extending or positioned between exactly two connecting elements." Br. 10. Appellant notes that Brown, for example, fails to disclose the claimed configurations because "Brown discloses extraneous 'connecting elements' that run afoul of the proper interpretation of the circumferential segments 'extending between two [and only two] connecting elements' claimed in independent Claims 1 and 8." Br. 10. It is telling that Appellant feels the need to include the additional language "and only two" when characterizing its allegedly correct interpretation of the claims. This appears to support the conclusion that the actual claim language, which does not recite "and only two," may properly be interpreted to include more than two connecting elements. Further, Appellant argues that "the prior art must actually include the claimed occurrence of the five/three/connector pattern" and that Brown is deficient regarding this pattern. Br. 10. This argument again assumes that such a pattern may not also include other elements. As explained by the Examiner (RAN 10-11) and shown in Appellant's own marked up figures, it is clear that Brown teaches five linear segments (shaded) and three linear segments (unshaded) extending between two connectors that meet the five/three/connector pattern. Br. 10. The fact that Brown also teaches additional connectors (circled) does not negate the fact that the claimed elements are present in Brown. Id. Appellant also argues that "[u]nder the examiner's adopted reasoning, each circumferential segment extends between four connecting elements – not two." Br. 10. Again, such an interpretation assumes that the claim Appeal 2014-006853 Reexamination Control 95/001,769 US Patent No. 7,942,922 B2 7 requires two and only two connecting elements, which it does not. If a segment extends between four connecting elements, it stands to reason that it also extends between two of those four elements. As noted above, the claim does not require, as Appellant asserts, that the segment extend between two "and only two" connecting elements. Accordingly, we are not persuaded of error in the Examiner's interpretation. The Examiner makes clear findings that each of the recited elements is present in Brown. See RAN 10-11 and 24-25. There does not appear to be any disagreement as to whether Brown teaches what the Examiner finds, only whether the extra elements contained in Brown are permitted by the claims. Accordingly, having concluded that the claims allow for the extra elements contained in the cited references, we will not go into further detail regarding the Examiner's rejection over Brown other than to say that the Examiner's findings are sufficient to sustain the anticipation rejection. Likewise, we sustain the Examiner's rejection of claim 1 as anticipated by Sabaria as the art and arguments are essentially the same as those in regard to Brown. Having concluded that the Examiner properly rejected representative claim 1 as anticipated by each of Brown and Sabaria, we will not address each of the remaining rejections of the other two independent claims or the rejections of the dependent claims, which were argued together, and affirm them on the same basis as we have affirmed claim 1. Furthermore, we do not reach the rejections involving Von Oepen, as we deem them cumulative over the rejections over Brown and Sabaria. See 37 C.F.R. § 41.77(a) (2011). Appeal 2014-006853 Reexamination Control 95/001,769 US Patent No. 7,942,922 B2 8 DECISION For the above reasons, we AFFIRM the Examiner’s decision to reject claims 1-20. 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). In the event neither party files a request for rehearing within the time provided in 37 C.F.R. § 41.79, and this decision becomes final and appealable under 37 C.F.R. § 41.81, a party seeking judicial review must timely serve notice on the Director of the United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983. AFFIRMED PATENT OWNER: CHRISTOPHER & WEISBERG, P.A. 200 EAST LAS OLAS BOULEVARD, SUITE 2040 FORT LAUDERDALE, FLORIDA 33301 THIRD PARTY REQUESTER: ARNOLD & PORTER LLP ATTN: IP DOCKETING DEPT. 555 12TH STREET, N.W. WASHINGTON, D.C. 20004-1206 LB Copy with citationCopy as parenthetical citation