Ex Parte Addonizio et alDownload PDFPatent Trial and Appeal BoardSep 25, 201495001768 (P.T.A.B. Sep. 25, 2014) 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. 95/001,768 10/04/2011 Scott J. Addonizio P33852US00/25216.028 6722 31292 7590 09/25/2014 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 09/25/2014 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 2014-006675 Reexamination Control 95/001,768 US Patent No. 7,967,852 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 June 28, 2011 to Addonizio et al. (hereinafter referred to as the '852 patent). Appeal 2014-006675 Reexamination Control 95/001,768 US Patent No. 7,967,852 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 '852 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 '852 patent is related to U.S. Patent No. 7,942,922 B2, which is the subject of an inter partes reexamination, Reexamination Control 95/001,769, which is also being appealed as appeal number 2014-006853. 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 first helical segments, each first helical segment consisting of a plurality of first circumferential segments alternating with a plurality of connecting elements, each first circumferential segment having five linear struts connected to each other by four curved portions; and a plurality of second helical segments, Appeal 2014-006675 Reexamination Control 95/001,768 US Patent No. 7,967,852 B2 3 each second helical segment consisting of a plurality of second circumferential segments alternating with the plurality of connecting elements, each second circumferential segment having three linear struts connected to each other by two curved portions; wherein a plurality of the first circumferential segments are connected to a plurality of the second circumferential segments to define a plurality of adjacent cylindrical elements. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Burmeister Brown Von Oepen2 Sabaria Roussigne Duerig 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 EP 1 025 812 B1 WO 00/71053 A1 June 24, 2003 Apr. 17, 2007 (filed Nov. 20, 1998) May 22, 1997 Nov. 11, 1998 Aug. 12, 1999 Jan. 4, 2006 (pub. Aug. 9, 2000) Nov. 30, 2000 THE REJECTIONS ON APPEAL The Examiner made the following rejections: 1. Claims 1-3, 5-9, 11-14, and 16-20 stand rejected under 35 U.S.C. § 102(e) as being anticipated by Brown. Right of Appeal Notice (hereinafter “RAN”) 13. 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 2014-006675 Reexamination Control 95/001,768 US Patent No. 7,967,852 B2 4 2. Claims 1-8, 11-16, and 18-20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Sabaria. RAN 14. 3. Claims 1-3, 5-8, 11-14, and 18-20 stand rejected under 35 U.S.C. § 102(b) as being anticipated by Von Oepen. RAN 15. 4. Claims 1-3, 5-9, 11-14, and 16-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Burmeister. RAN 17. 5. Claims 4 and 15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Roussigne. RAN 18. 6. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Duerig. RAN 19. 7. Claim 10 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Brown and Nuess. RAN 20. 8. Claims 1-8, 11-16, and 18-20 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sabaria and Burmeister. Id. 9. Claims 4, 9, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sabaria and Roussigne. RAN 22. 10. Claims 9, 10, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Sabaria and Neuss. RAN 23. 11. Claims 4, 9, 15, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen and Roussigne. Id. 12. Claims 7 and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen and Duerig. RAN 24. 13. Claim 7 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen and Sabaria. RAN 25. Appeal 2014-006675 Reexamination Control 95/001,768 US Patent No. 7,967,852 B2 5 14. Claims 9, 10, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen and Neuss. RAN 26. ANALYSIS Appellant argues the claims subject to the first ground of rejection as a group. Br. 6. Appellant further states, "all of the dependent claims 2-10, 12- 17, and 19-20 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). We adopt and incorporate by reference the Examiner’s findings concerning the disclosures of Brown and Sabaria. See RAN 13-15 and 26- 28, incorporating by reference Supplemental Request for Inter Partes Reexamination (hereinafter “Request”) 31-38 and 58-64. For example, the Examiner finds (RAN 13), which is also shown in Appellant's own marked up figures, that Brown teaches five linear segments (shaded) and three linear segments (unshaded) extending between two connectors that meets the five/three/connector pattern. Br. 8. Appellant's main argument regarding Rejection 1 as well as the Examiner's various other rejections is that the Examiner has not properly construed the claims and thus has misapplied the art of record. See, e.g., Br. 6-8. Specifically, with respect to claim 1, Appellant argues that the transitional phrase “consisting of” in claim 1 " excludes any element, step, or ingredient not specified in the claim." Br. 7. While we agree generally with Appeal 2014-006675 Reexamination Control 95/001,768 US Patent No. 7,967,852 B2 6 this proposition regarding the proper construction of claim terms involving the language "consisting of," Appellant's claim as a whole is open-ended with only specific elements requiring a closed construction. Claim 1 begins with the open-ended preamble, "[a]n expandable stent, comprising." The claim additionally recites, among other limitations, "each first helical segment consisting of a plurality of first circumferential segments alternating with the plurality of connecting elements" and "each second helical segment consisting of a plurality of second circumferential segments alternating with the plurality of connecting elements" (emphasis added). As a matter of claim construction, all this claim language requires is that each of the first and second helical segments includes only a plurality of circumferential segments alternating with the plurality of connecting elements. The transitional phrases “consisting of” limit only the first and second helical elements, and do not limit any other element of the claimed stent. The phrase does not foreclose the presence of other unclaimed elements in the stent, as long as such elements are not excluded by other limitations. Based on the record before us, we are not persuaded that phrases “consisting of” as used in claim 1 exclude the structures that Appellant identifies as “extraneous connecting elements” in the stents of Brown, Br. 8, and Sabaria, Br. 10. Appellant argues that "[i]t appears that under the Examiner's explanation that the extra 'connecting element' would necessarily constitute either a portion of the 'helical segments' or 'circumferential segments.'" Br. 8. First, we do not agree with Appellant's conclusion. We agree with the Examiner that, in direct contradiction to Appellant's assertion, "[t]hese so Appeal 2014-006675 Reexamination Control 95/001,768 US Patent No. 7,967,852 B2 7 called 'extra' connecting elements are not part of the first helical segments even though they are connected to the first circumferential segments. These connecting elements are considered part of the stent, which is permitted because of the use of the open ended transitional term comprising." RAN 27 (emphasis added). Accordingly, the Examiner interprets the claims so that the claimed helical and circumferential segments include only what is claimed, but then acknowledges that there are extra connecting elements. Because of the open-ended nature of claim 1, we agree with the Examiner that this is a broadest reasonable interpretation of the claims. The fact that an element connects two circumferential segments does not imply that the element is part of one or the other of those circumferential segments, such that the circumferential elements fail to satisfy the “consisting of” language. The Examiner makes clear findings that each of the recited elements is present in each of Brown and Sabaria. See RAN 13-14 and 26-27, incorporating by reference Request 31-38 and 58-64. There does not appear to be any disagreement as to whether either Brown or Sabaria teaches what the Examiner finds, only whether the extra elements contained in each of Brown and Sabaria is 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 rejections over Brown and Sabaria other than to say that the Examiner's findings are sufficient to sustain the anticipation rejections. Having concluded that the Examiner properly rejected representative claim 1 as anticipated by each of Brown and Sabaria, as noted supra, we will not address each of the remaining rejections of the other two independent Appeal 2014-006675 Reexamination Control 95/001,768 US Patent No. 7,967,852 B2 8 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 involving Brown and Sabaria. See 37 C.F.R. § 41.77(a) (2011). 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 Appeal 2014-006675 Reexamination Control 95/001,768 US Patent No. 7,967,852 B2 9 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 Copy with citationCopy as parenthetical citation