Ex Parte 7942922 et al

Patent Trial and Appeal Board

Sep 26, 2014

95001769 (P.T.A.B. Sep. 26, 2014)

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).
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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;
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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.
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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.
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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.
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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
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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).
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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