Ex Parte Bicek et al

Board of Patent Appeals and Interferences

Jul 19, 2007

10058640 (B.P.A.I. Jul. 19, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte ANDREW D. BICEK and
TIMOTHY S. GIRTON
__________

Appeal 2007-2563
Application 10/058,640
Technology Center 3700
__________

Decided: July 19, 2007
__________

Before DONALD E. ADAMS, LORA M. GREEN, and RICHARD M.
LEBOVITZ, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal from the final rejection of 1, 2, 4, 5, 8-11,
13, 14, and 17. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

STATEMENT OF CASE
The claims are directed to stents having a serpentine pattern. Claims
1-4, 5, 7-14, 16, and 17-22 are pending (Br. 2). Claims 3, 7, 12, and 16 are
withdrawn from consideration (Br. 2). The Examiner withdrew the rejection
of claims 18-22 in the Answer (Answer 3). Claims 1, 2, 4, 5, 8-11, 13, 14,
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Application 10/058,640

and 17 are rejected over prior art. The Examiner relies on the following
evidence of unpatentability:
Dang US 5,935,162 Aug. 10, 1999
Dinh US 6,019,789 Feb. 1, 2000
The following rejections are on appeal:
Claims 1, 2, 4, 5, 10, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Dang (Answer 3).
Claims 8, 9, and 17 stand rejected under 35 U.S.C. § 103(a) as
obvious over Dang in view of Dinh (Answer 7).
We select claims 1, 8, and 10 as representative:
1. A stent having a proximal end and a distal end, the stent
comprising:
a plurality of axially spaced serpentine bands, each
serpentine band having a proximal and distal end and consisting of a
plurality of interconnected struts, the struts of substantially the same length,
serpentine bands which are adjacent one another connected one to the other;
and
a plurality of wishbone connections, each wishbone
connector connecting two serpentine bands which are adjacent one another
and having an elongate portion which is disposed between the two
serpentine bands and does not overlap longitudinally with either of the two
serpentine bands, the elongate portion having a proximal end and a distal
end, the proximal end having two legs extending therefrom to one of the two
serpentine bands and the distal end having two legs extending therefrom to
the other of the two serpentine bands, the two legs extending from the
proximal end of the elongate portion of each wishbone connector being
circumferentially and longitudinally displaced from the two legs extending
from the distal end of the elongate portion of the wishbone connector,
at least one wishbone connector connecting serpentine
bands which are adjacent one another.

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8. The stent of claim 1 wherein each serpentine band comprises
alternating peaks and troughs, the number of peaks in the stent being twice
the number of wishbone connectors.

10. A stent having a first proximal end and a distal end, the stent
comprising:
a plurality of axially spaced serpentine bands, each serpentine band
having a proximal end and a distal end, each serpentine band having a
plurality of peaks and troughs, all of the peaks longitudinally aligned with
one another, all of the troughs longitudinally aligned with one another,
serpentine bands which are adjacent one another connected one to the other;
and
a plurality of wishbone connectors, each wishbone connector
connecting two serpentine bands which are adjacent one another and having
an elongate portion which is disposed between the two serpentine bands and
does not overlap longitudinally with either of the two serpentine bands, the
elongate portion having a proximal end and a distal end, the proximal end
having two legs extending therefrom to one of the two serpentine bands and
the distal end having two legs extending therefrom to the other of the two
serpentine bands, the two legs extending from the proximal end of the
elongate portion of each wishbone connector being circumferentially and
longitudinally displaced from the two legs extending from the distal end of
the elongate portion of the wishbone connector,
at least one wishbone connector connecting serpentine
bands which are adjacent one another.

ISSUES ON APPEAL
There are two issues in dispute between the Examiner and Appellants.
First, Appellants contend that Dang’s stent does not anticipate claims
1 and 10 because it “fails to include wishbone connectors that have elongate
portions, which do not overlap longitudinally with either of the two
serpentine bands” as recited in claims 1 and 10 (Br. 8; see also Br. 12). The
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Application 10/058,640

Examiner contends that “[t]he term overlap is considered to mean, ‘to cover
a part of.’ There are no components disclosed by Dang that are covered by
another part” (Answer 8). The first issue in this appeal is whether the
Examiner erred in determining that Dang describes a stent having serpentine
bands which do not overlap with the legs of the wishbone connector as
recited in claims 1 and 10.
Secondly, Appellants contend that the bands described by Dang
“consist of not only struts of substantially the same length but also [of] the
extraneous features of the ‘legs’ of each wishbone connector [described as
the “tie member” in Dang]” which are excluded from the serpentine bands of
claim 1 by the limitation “consisting of a plurality of struts” (Br. 7). The
Examiner contends that Appellants are “giving to[o] much weight to the
word[s] “consisting of” in claim 1, and the phrase does not “limit the
serpentine bands to be made solely of struts” (Answer 8). The second issue
in this appeal is whether the recitation in claim 1 that the serpentine bands
are “consisting of . . . interconnected struts” excludes the tie members of
Dang.
Both these issues turn on claim interpretation. Consequently, we
begin our analysis with the interpretation of claims 1 and 10.

CLAIM INTERPRETATION
Claims 1 and 10 are directed to stents which comprise “a plurality of
axially spaced serpentine bands” and “a plurality of wishbone connectors.”
The wishbone connectors connect two adjacent serpentine bands together.
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The serpentine bands in claim 1, but not in claim 10, are “consisting
of a plurality of interconnected struts.” The phrase “consisting of” is a
“term[ ] of art in patent law that ‘define[s] the scope of the claim with
respect to what unrecited additional components or steps, if any, are
excluded from the scope of the claim.’ MPEP §2111.03; accord Vehicular
Techs. Corp., 212 F.3d at 1382-83. The phrase ‘consisting of’ signifies
restriction and exclusion of unrecited steps or components. MPEP
§2111.03.” Conoco Inc. v. Energy & Envtl. Int’l LC, 460 F.3d 1349, 1360,
79 USPQ2d 1801, 1808-09 (Fed. Cir. 2006).
A “strut” is a structural member that is used to resist longitudinal
compression.1 By reciting that the serpentine bands are “consisting of . . .
interconnected struts,” we interpret the claim to exclude any structural
member from the serpentine band other than the strut.
Claims 1 and 10 also recite that each “wishbone connector,” which
connects adjacent serpentine bands, has an “elongate portion . . . disposed
between the two serpentine bands” which “does not overlap longitudally
with either of the two serpentine bands.” The elongate portion has two distal
and two proximal legs, each which connect, respectively, to an adjacent
serpentine band. The term “overlap” means “extend over and cover a part
of” and “to coincide in part with; having in common with.”2 In other words,
when one structural member “covers” another, they have a part in common.
We interpret the phrase “does not overlap longitudinally” to mean that the

1 The Random House College Dictionary 1304 (Revised Edition 1982).
2 Id. at 948.
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wishbone connector legs do not extend into or have a part in common with
the serpentine bands.
FINDINGS OF FACT
Dang
1. Dang discloses a stent having cylindrical sections which comprise a
plurality of “W-shaped elements . . . [which] alternate between pairs of W-
shaped elements that open towards each other … and pairs . . . that open way
from each other” (Dang, col. 2, ll. 50-62, and Figs. 2 and 7).
2. The W-shaped elements are formed from a plurality of struts having
substantially the same length (Dang, Figs. 2 and 7; Answer 3).
3. Tie members (50) connect the “center sections of the pairs of W-shaped
elements that open towards each other” (Dang, col. 2, ll. 62-67 and Figs. 2
and 7; Answer 3-4).
4. Fig. 2 of Dang shows the W-shaped elements (30) connected to the tie
members (Dang, col. 4, l. 54 to col. 5, l. 12).
5. Fig. 3 of Dang is reproduced as follows:

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Application 10/058,640

Fig. 3 shows a tie member (50) connected at the peak or apex of the W-
shaped element (Dang, col. 5, ll. 20-28).
6. The Examiner finds that Dang’s W-shaped elements (Dang, col. 2, ll. 50-
62, and Figs. 2 and 7) satisfy the limitation in claims 1 and 10 of “serpentine
bands” (Answer 3) and of “serpentine bands . . . consisting of a plurality of
interconnected struts . . . of substantially the same length” as recited in claim
1 (Answer 3).
7. The Examiner finds that “tie members” disclosed in Dang (Dang, col. 2,
ll. 62-67 and Figs. 2 and 7) meet the limitation of claims 1 and 10 of a
“plurality of wishbone connectors, each . . . having an elongate portion that
does not overlap” with the serpentine bands (Answer 3-4).
Dinh
8. “With reference to Figures 5[B] and 6[B], Dinh teaches a stent 160
having plurality of serpentine bands 162 connected by a plurality of
wishbone connectors 166, the serpentine bands 162 comprising alternating
peaks and troughs, the number of peaks in the stent being twice the number
of wishbone connectors 166” (Answer 7; Dinh, col. 7, ll. 13-20).
9. “Dinh also teaches that the width of the serpentine bands 162 is greater
than that of the wishbone connectors 166 to create a stent having selectively
variable radial rigidity and longitudinal flexibility” (Answer 7; Dinh, col. 7,
ll. 13-61).
10. The Examiner concludes “in view of the teachings it would have been
obvious to one of ordinary skill in the art at the time the invention was made
to have modified the stent disclosed by Dang to incorporate the features
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taught by Dinh to produce a stent that provides variable rigidity and
longitudinal flexibility” (Answer 7).

DISCUSSION
Anticipation by Dang
Claims 1, 2, 4, 5, 10, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Dang (Answer 3).
Claim 1 is drawn to a stent having “serpentine bands” and “wishbone
connectors, each . . . having an elongate portion which . . . does not overlap
longitudinally with . . . the two serpentine bands” and which has “two legs”
at the proximal and distal ends of the elongate portion. The Examiner finds
that both elements are described in Dang’s stent (Answer 3-4; Findings of
Fact 6, 7). Fig. 2 from Dang is reproduced below.

Fig. 2 of Dang has been marked-up to show the correspondence between the
structural elements of Dang’s stent and the stent of claim 1.
We agree with Examiner’s findings that Dang’s W-shaped elements
satisfy the limitation recited in claims 1 and 5 of “serpentine bands”
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(Answer 3; Findings of Fact 6). However, we do not agree with the
Examiner (Answer 3-4; Findings of Fact 7) that the tie member described in
Dang meets the limitations of the wishbone connector as recited in appealed
claims 1 and 10.
Dang’s tie member (labeled as “elongate portion”) is shown in Fig. 2
(above) as connecting to the “apex” and inward facing loop of the W-shaped
or serpentine element (Dang, col. 2, ll. 62-67, col. 5, ll. 20-28, and Figs.
2 and 7; Findings of Fact 3, 5). For the tie member to meet the limitation in
claims 1 and 10 of a “wishbone connector . . . having two legs extending
therefrom to . . . the serpentine bands,” it is necessary to find that a portion
of the loop serves as the leg of the wishbone connector. This is shown in our
marked-up copy of Fig. 2 (above) where the tie member with legs
(“wishbone connector”) is filled in with black and the W-shaped element
(“serpentine band”) is filled in with grey. We have interpreted the phrase
“does not overlap longitudinally” to mean that the wishbone connector legs
do not extend into or have a part in common with the serpentine bands. As
the figure shows, in order for the tie member to be described as having
“legs,” the legs must be formed from the loop of the W-shaped element.
That is, the legs coincide with the W-shaped element that comprises the
stent’s serpentine band. Thus, the claim limitation of “does not overlap” is
not satisfied by Dang’s stent because the tie member’s legs have a part
which extends into and is in common with the “serpentine” struts.
Anticipation requires that every element and limitation of the claimed
invention must be found in a single prior art reference, arranged as in the
claim. Karsten Mfg. Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383, 58
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USPQ2d 1286, 1291 (Fed. Cir. 2001). In this case, we agree with
Appellants that Dang does not anticipate claims 1 and 10 because it does not
describe a stent, as claimed, in which each leg of an elongate connector
“does not overlap longitudinally” with the serpentine bands; Dang’s
connector legs overlap with the serpentine bands. Thus, we reverse the
rejection of claims 1 and 10, and dependent claims 2, 4, 5, 11, 13, and 14.
The Examiner argues that Appellants give “to[o] much weight to the
claim language” of “does not overlap longitudinally” (Answer 8). The
scope of a claim is defined by the language used to describe the invention.
The “weight” of each term recited in the claim is measured by properly
determining “the broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in the art, taking
into account whatever enlightenment by way of definitions or otherwise that
may be afforded by the written description contained in the applicant’s
specification.” In re Morris, 127 F.3d 1048, 1054, 44 USPQ2d 1023, 1027
(Fed. Cir. 1997). The Examiner interprets the term “overlap” as we do – to
mean “to cover a part of” (Answer 8). The “legs” of Dang’s tie member
coincide with, and therefore necessarily, cover a part of the serpentine band.
Thus, giving the claim interpretation its proper weight in defining the scope
of the claim, we conclude that Dang does not meet the limitation excluding
overlap between the legs and struts.
Claim 1 also requires that the serpentine bands are “consisting of a
plurality of interconnect struts.” We do not find that this limitation alone
distinguishes the stent of claim 1 from Dang’s stent. We interpreted
“consisting of” to exclude any other structural member from the serpentine
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band. In Dang, the only structures present in the W-shaped elements which
form the serpentine band are the struts. The wishbone connector legs
“overlap” with the struts. Thus, the connector’s leg is also a strut. In other
words, the serpentine bands actually consist only of struts. In our opinion,
the claim language does not exclude the serpentine struts from serving a dual
function as the legs of the connector.

Obviousness over Dang in view of Dinh
Claims 8, 9, and 17 stand rejected under 35 U.S.C. § 103(a) as
obvious over Dang in view of Dinh (Answer 7).
Obviousness requires a teaching that all elements of the claimed
invention are found in the prior art and “a reason that would have prompted
a person of ordinary skill in the relevant field to combine the elements in the
way the claimed new invention does” KSR Int’l Co. v. Teleflex Inc., 127 S.
Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
We agree with Appellants that Dinh “does nothing to address the
failure of Dang to teach or suggest all of the elements of the instant claims”
(Br. 14). Thus, we reverse the rejection of claim 8, 9, and 17.

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SUMMARY
Giving the claims their broadest reasonable interpretation, we
conclude that the Examiner erred in determining Dang describes every
element of the claimed invention as required for anticipation under 35
U.S.C. § 102(b). This deficiency is not correct by Dinh. Accordingly, the
rejections of all the appealed claims are
REVERSED.

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