Ex Parte Addonizio et al

Patent Trial and Appeal Board

Sep 25, 2014

95001768 (P.T.A.B. Sep. 25, 2014)

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).
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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,
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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.
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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.
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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
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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
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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
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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

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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