Ex Parte Das

Board of Patent Appeals and Interferences

Jul 11, 2007

10094866 (B.P.A.I. Jul. 11, 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is not binding precedent of the Board.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 GLADWIN S. DAS
____________

Appeal 2007-2557
Application 10/094,866
Technology Center 3700
____________

DECIDED: July 11, 2007
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
NANCY J. LINCK, Administrative Patent Judges.
LINCK, Administrative Patent Judge.
Concurring opinion by ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 1, 3, 4, 6, 7, 8, 10, and 13, all the
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pending claims in the above-referenced application.1 We have jurisdiction
to decide this case pursuant to 35 U.S.C. § 6(b).
We affirm.

STATEMENT OF THE CASE
According to the Specification, there is need in the art “to provide a
stent which can be articulated to facilitate the delivery of a stent through the
often tortuous pathway provided by coronary arteries to a desired final
location within the patient.” (Spec. at 4). The description continues, “the
stent should have the ability to ‘snake’ around complex curves and tight
curves encountered in the circulatory system, especially those associated
with the coronary system which supplies critical blood flow to the heart.”
Id. Further desired is the “avoidance of any stent structure, which tend to
snag or catch on the interior of the various blood vessels.” Id. Finally, “the
control of end-to-end length changes upon expansion is a desirable feature in
stents.” Id. at 5.
In the preferred embodiments, the expandable stent . . .
is expandable by enlarging an expandable balloon positioned
within the stent. The preferred stent includes a plurality of
modules, each of the modules being radially interconnected
to form a ring configured to be expandably interconnected
and being interconnected to each other in series by respective
interconnection bridges. Each ring including a continuous
strand of a material, the continuous strand of material being
interconnected end to end so as to generally encompass a
radial space with the ring. The strand of material being
configured to include a repeating series of interconnected

1 A decision affirming the rejection of all the claims in a related appeal
2007-0383 (Serial No. 10/902,318) was mailed on March 30, 2007. The
decision in that appeal is hereafter referred to as “Das ‘318”).
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repeating W-shaped strand configurations having a repeating
dip, rise, dip, rise, loop, dip, rise, dip, rise, loop patterned
configuration.
(Id. at 5.)
The Specification concludes:
It is understood that even though numerous
characteristics and advantages of various embodiments . . .
have been set forth in the foregoing description, together
with details of the structure and function of various
embodiments . . . , this disclosure is illustrative only and
changes may be made in detail, especially in matters of
shape, size and arrangement of parts . . . to the full extent
indicated by the broad general meaning of the terms in which
the appended claims are expressed.”
(Id. at 27 (emphasis added).)
The Examiner’s Rejections
The Examiner relies upon the following prior art:
Ley US 6,013,091 Jan. 11, 2000
Hojeibane US 6,017,363 Jan. 25, 2000
Dinh US 6,019,789 Feb. 1, 2000
Ndondo-Lay US 6,273,908 B1 Aug. 14, 2001

Based on these references, the Examiner entered the following rejections:
1) Claims 1, 4, 7, 8, and 13 under 35 U.S.C. § 103(a) based on Ley in view
of Hojeibane or Dinh; and
2) Claims 3, 6, and 10 under 35 U.S.C. § 103(a) over Ley and Hojeibane or
Dinh in view of Ndondo-Lay.
Additionally, claims 1, 3, 4, 6-8, 10, and 13 stand provisionally
rejected under the judicially-created doctrine of obviousness-type double
patenting over claims 1-3 of Das ‘318 in view of Hojeibane.
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With emphasis added to indicate the two disputed limitations,2
representative claim 1 reads:
1. An expandable stent, the stent being expandable by
enlarging an expandable balloon positioned within the stent
when the stent is within a patient, the expandable stent
comprising:
a plurality of segments, each of the segments being
configured to be expandably interconnected and being
interconnected to each other in series by a plurality of
interconnection bridges; each segment including a
continuous strand of a material, the continuous strand of
material being interconnected end to end so as to generally
encompass a radial space within the segment; the strand of
material being configured to include a repeating series of
interconnected repeating W-shaped strand configurations
having a repeating dip, rise, dip, rise, loop, dip, rise, dip,
rise, loop patterned configuration; at least one of the
plurality of interconnection bridges including a plurality of
narrowings at certain points in the interconnection bridge
that permit the interconnection bridge to have greater
flexibility when bending proximate the plurality of
narrowings.

ISSUES ON APPEAL
Appellant contends: (1) The Examiner “has not identified structure
which corresponds to Appellant’s claimed ‘dip, rise, dip, rise, loop, dip, rise,
dip, rise, loop’ configuration” (Reply Br. 5; see also Br. 5); and (2) Neither

2 These two limitations are the only limitations argued by Appellant with
respect to all the pending claims. Appellant does not dispute the additional
limitation in claims 3, 6, and 10 for which Ndondo-Lay was cited in the
second ground of rejection. Arguments not made are waived. See 37 C.F.R.
§ 41.37(c)(1)(vii) ("Any arguments or authorities not included in the brief or
a reply brief ... will be refused consideration by the Board, unless good cause
is shown."). Thus, we address these two limitations with respect to claim 1.
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Ley with Hojeibane nor with Dinh “teach or suggest . . . an expandable stent
. . . with at least one of the . . . interconnection bridges including a plurality
of narrowings at certain points in the interconnection bridge so as to have
greater flexibility when bending proximate the plurality of narrowings” (Br.
8-9).
In response, the Examiner contends: (1) Ley’s Fig. 1 discloses the
claimed “dip, rise, dip, rise, loop, dip, rise, dip, rise, loop” configuration
(Answer3 9; see also Answer 4); and (2) Hojeibane and Dinh teach the use
of narrowings in interconnection bridges to increase the flexibility of a stent
(Answer 6-7). Thus, according to the Examiner, “it would have been prima
facie obvious to put one or more narrower places in a support member (18)
of Ley in order to improve the flexibility of the device” (Answer 8). With
these contentions before us, we frame the issues as follows:
Does Ley disclose “a repeating series of interconnected repeating W-
shaped strand configurations having a repeating dip, rise, dip, rise, loop, dip,
rise, dip, rise, loop patterned configuration”?
Would the invention of claim 1, including “a plurality of narrowings
at certain points in the interconnection bridge that permit the interconnection
bridge to have greater flexibility when bending,” have been obvious, in view
of the teachings of Ley and Hojeibane or Ley and Dinh?

3 “Answer” refers to “Corrected Examiner’s Answer” (mailed Oct. 23,
2006).
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FINDINGS OF FACT4
Claim Interpretation
1. The phrase “the strand of material being configured to include a
repeating series of interconnected repeating W-shaped strand configurations
having a repeating dip, rise, dip, rise, loop, dip, rise, dip, rise, loop patterned
configuration” does not, to our knowledge, have a well-recognized meaning
in the stent art. Further it is not defined in the Specification, except through
the description of a preferred embodiment. Significantly, it is not limited by
the claim language to a configuration shown in any of the figures, for
example with language such as “shown in Fig. 9.” Thus, we give these
claim terms their broadest reasonable interpretation consistent with the
Specification.
2. The term “loop” means: “a curving or doubling of a line so as to
form a closed or partially open curve within itself through which another
line can be passed or a hook may be hooked.” Webster’s Ninth New
Collegiate Dictionary 705 (1990) (“Webster’s”).
3. The language “include” prefaces “a repeating series of
interconnected repeating W-shaped strand configurations having a repeating
dip, rise, dip, rise, loop, dip, rise, dip, rise, loop patterned configuration.”
Thus, the claim language does not exclude additional twists and turns, et
cetera, from the configuration, so long as the configuration satisfies the
language of the claim.
4. The terms in the claim phrase “a plurality of narrowings . . . in the
interconnection bridge that permit the interconnection bridge to have greater
flexibility when bending” are not further defined in the Specification.

4 Findings of Fact are abbreviated “FF.”
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5. Thus, we give these terms their broadest reasonable interpretation,
finding “narrowings” means part of the bridge where its width has been
decreased (see Webster’s 787 (defining “narrow” to mean “of less than
standard width”)); and “increase in flexibility” means any increase in ability
to bend without breaking (see Webster’s 473 (defining “flexible”) and 400
(defining flexible relative to “elastic”)).

The Prior Art
6. Appellant does not dispute Ley discloses all the limitations of
claim 1, except “the strand of material being configured to include a
repeating series of interconnected repeating W-shaped strand configurations
having a repeating dip, rise, dip, rise, loop, dip, rise, dip, rise, loop patterned
configuration” and “a plurality of narrowings at certain points in the
interconnection bridge that permit the interconnection bridge to have greater
flexibility when bending proximate the plurality of narrowings.”
7. Ley discloses the disputed “dip, rise, dip, loop” (see Ley’s Figs. 1,
3 and 4 (below)5), in which Ley illustrates the repeating pattern “dip, rise,
dip, rise, loop, dip, rise, dip, rise, loop,” in the form of a “W”, as indicated
by the Examiner (Answer 9). The dips are labeled 14 and designated “dip,”
the rises are not numbered but are designated “rise,” and the loops are
labeled 19 and designated “loops.”
8. The loop encompasses an area on each side of the
“circumferentially extending support members,” also designated 19. (Col. 2,
ll. 44-45.) Thus, the loop in Ley’s figures, relied upon to satisfy the claim

5 The figures (pp. 8-9 infra) were previously annotated by the Examiner in
Das ‘318 and reproduced in the Das ‘318 opinion.
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language, has a support member extending from its center and also appears
to have a small indentation where the support member is secured. (See Figs.
3 & 4.)
9. The repeat pattern of Ley is best illustrated in Fig. 1. See the
bolded areas on each side of the figure, with the left side labeled to indicate
the repeating pattern.
10. The language of claim 1 does not exclude the support member
extending from the center of the loop, or its minor indentation, or require a
reversal of orientation of the strand. The loop continues “to form a . . .
partially open curve within itself through which another line [could] be
passed.” Webster’s 705.

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11. With respect to the “plurality of narrowings” limitation,
“Hojeibane . . . teaches that connection[s] with narrowing midpoints to
improve flexure were known.” (Answer 6 (citing col. 6, ll. 30-44).)
12. Hojeibane further teaches that “alternate designs of the connector
to insure flexibility are possible, and contemplated.” (Col. 6, ll. 42-44.)
13. While Dinh focuses on “changing the dimensions of the unit cell”
rather than those of specific components to vary flexibility, Dinh
additionally teaches “changing . . . the length and width of the unit cell
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components,” i.e., the connector, to do so. (Col. 5, ll. 64-66 (emphasis
added); see also col. 7, ll. 8-12 (“the structure of the connecting segment
itself” can be “varied to alter flexibility of the stent”).)
14. Dinh’s Figures 4A and 6D at least would have suggested varying
the width of certain portions of the interconnecting bridge to provide
additional flexibility; and Figure 4A, when viewed with Figure 4B, would
have suggested doing so at two points in the bridge in that narrowed bend
134 in Figure 4A corresponds to two bends in Figure 4B (138 and an
unnumbered bend). (See FIGS. 4A, 4B & 6D.)
15. Based on the teachings of Hojeibane or Dinh, the skilled artisan
seeking more flexibility in a stent would have known to decrease the width
of Ley’s interconnecting bridges in “a plurality” of locations to obtain such
flexibility and would have had a reasonable expectation of obtaining such
increased flexibility by doing so.
Other Findings
16. The scope and content of the prior art and the level of skill in the
art are reflected in the cited prior art, all relating to improving stent design.
17. “A person of ordinary skill is also a person of ordinary creativity,
not an automaton.” KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742, 82
USPQ2d 1385, 1397 (2007).

PRINCIPLES OF LAW
During examination proceedings,
claims are given their broadest reasonable interpretation
consistent with the specification. See In re Graves, 69 F.3d
1147, 1152, 36 USPQ2d 1697, 1701 (Fed.Cir.1995); In re
Etter, 756 F.2d 852, 858, 225 USPQ 1, 5 (Fed.Cir.1985) (en
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banc). [This] proposition “serves the public interest by
reducing the possibility that claims, finally allowed, will be
given broader scope than is justified,” In re Yamamoto, 740
F.2d 1569, 1571, 222 USPQ 934, 936 (Fed.Cir.1984), and it
is not unfair to applicants, because “before a patent is granted
the claims are readily amended as part of the examination
process,” Burlington Indus., Inc. v. Quigg, 822 F.2d 1581,
1583, 3 USPQ2d 1436, 1438 (Fed.Cir.1987).
In re Hyatt, 211 F.3d 1367, 1372, 54 USPQ2d 1664, 1667 (Fed. Cir. 2000).
Thus, “the PTO applies to the verbiage of the proposed claims 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).
“Although the specification may aid the court in interpreting the
meaning of disputed language in the claims, particular embodiments . . . in
the specification will not generally be read into the claims.” Constant v.
Advanced Micro-Devices, 848 F.2d 1560, 1571, 7 USPQ2d 1057, 1064 (Fed.
Cir. 1988). See also United Carbon Co. v. Binney & Smith Co., 317 U.S.
228, 232 (1942) (“The claims measure the invention.”).
It is “the general rule that words in patent claims are given their
ordinary meaning in the usage of the field of the invention, unless the text of
the patent makes clear that a word was used with a special meaning.” Toro
Co. v. White Consol. Indus., 199 F.3d 1295, 1299, 53 USPQ2d 1065, 1067
(Fed. Cir. 1999).
“In assessing whether subject matter would have been non-obvious
under § 103, the Board follows the guidance of the Supreme Court in
Graham v. John Deere Co. The Board determines ‘“the scope and content
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of the prior art,”’ ascertains ‘“the differences between the prior art and the
claims at issue,”’ and resolves ‘“the level of ordinary skill in the pertinent
art.’”” In re Kahn, 441 F.3d 977, 985, 78 USPQ2d 1329, 1334-35 (Fed. Cir.
2006) (quoting Dann v. Johnston, 425 U.S. 219, 226, 189 USPQ 257, 260
(1976) (quoting Graham, 383 U.S. at 17, 148 USPQ at 467)). “Against this
background, the Board determines whether the subject matter would have
been obvious to a person of ordinary skill in the art at the time of the
asserted invention.” Id., 78 USPQ2d at 1335.
“One of the ways in which an [application’s] subject matter can be
proved obvious is by noting that there existed at the time of the invention a
known problem for which there was an obvious solution encompassed by the
. . . claims.” KSR Int’l, 127 S. Ct. at 1742, 82 USPQ2d at 1397.
While “rejections on obviousness grounds cannot be sustained by
mere conclusory statements,” Kahn, 441 F.3d at 988, 78 USPQ2d at 1336, a
determination that a claimed invention would have been obvious “need not
seek out precise teachings directed to specific subject matter of the . . .
claim, for [the Board] can take account of the inferences and creative steps
that a person of ordinary skill in the art would employ.” KSR Int’l, 127 S.
Ct. at 1741, 82 USPQ2d at 1396. Thus, “a reference must be considered not
only for what it expressly teaches, but also for what it fairly suggests.” In re
Burckel, 592 F.2d 1175, 1179, 201 USPQ 67, 70 (CCPA 1979), quoted with
approval in In re Baird, 16 F.3d 380, 383, 29 USPQ2d 1550, 1552 (Fed. Cir.
1994).

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DISCUSSION
Based on the above findings and principles of law, we conclude claim
1 would have been obvious to one of ordinary skill in the art based on the
teachings of Ley in view of Hojeibane or Dinh.
Appellant urges us to compare the figures in his Specification with
those of the prior art. (See Reply Br. 5-8 (referring to Appellant’s Figures 8
to 15). Contrary to Appellant’s suggestion, while our claim interpretation
must be consistent with the Specification, we do not limit a claim’s scope to
the disclosed embodiments, absent some clear direction to do so. Had
Appellant wanted to so limit his claims, he clearly could have done so by
adding the language “as shown in Figure . . . .”
Citing to a description of “preferred stents,” Appellant argues “the
sequence of structures . . . in Ley . . . does not reverse the orientation of the
strand as disclosed and claimed by Appellant.” (Reply Br. 9 (citing Spec.
24, ll. 11-23).) Appellant further argues that the “loops in Ley . . . contain
intervening structure, the support structure, which passes through the loops”
and “equates to a ‘loop, loop, intervening support structure, loop, loop.’”
(Reply Br. 9.)
As found above, under the broadest reasonable interpretation, the
claim language does not require a reverse of orientation of the strand and
does not exclude Ley’s additional structure; further it does not require Ley’s
loop (as identified by the Examiner) to be considered more than one loop.
(FFs 1-3, 7-10.) While Appellant’s interpretation may be a reasonable one,
we find the Examiner’s is also reasonable and consistent with the broad
teachings of the Specification. Thus, given our charge regarding how we are
to interpret claims during prosecution, we adopt that of the Examiner.
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With respect to the second disputed limitation, i.e., “a plurality of
narrowings . . . in the interconnection bridge,” Appellant disputes the
Examiner’s findings regarding the teachings of Hojeibane and Dinh. (Reply
Br. 10-12.) Both Hojeibane and Dinh identify the problem of increasing
stent flexibility and how to address it. Hojeibane expressly discloses making
connectors narrower at their midpoints to increase flexibility and suggests
“alternate designs of the connector to insure flexibility are possible, and
contemplated.” (FFs 11, 12 (citing col. 6, ll. 30-44).) Alternatively Dinh
discloses the value of flexibility in a stent and suggests changing the width
of the connector to vary it. (FF 13 (citing col. 5, ll. 63-66).) With this
teaching in mind, Dinh’s stent designs, disclosed in FIGs. 4A, 4B and 6D, at
least suggest narrowing part of the connecting segment in more than one
place. (FF 14.)
Thus, the skilled artisan desiring more flexibility in a stent, and aware
of Hojeibane or Dinh, would have had reason to include “a plurality of
narrowings” in Ley’s connector to solve the problem of increasing the
stent’s flexibility. Additionally, that artisan would have had a reasonable
expectation that adding such narrowings would in fact solve the problem.
(FF 15.)
Obviousness-Type Double Patenting
Claims 1, 3, 4, 6-8, 10, and 13 stand provisionally rejected under the
judicially-created doctrine of obviousness-type double patenting over claims
1-3 of Das ‘318. Appellant does not dispute this ground of rejection. Thus,
we summarily affirm it.

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CONCLUSION
In summary, we affirm the Examiner’s § 103(a) rejection of claim 1
based on Ley in combination with either Hojeibane or Dinh . Further, as
Appellant did not separately argue any additional limitations in the
remaining claims, we affirm the rejections of these claims 3, 4, 6-8, 10, and
13, including that of claims 3, 6, and 10 based on Lay in combination with
either Hojeibane or Dinh in view of Ndondo-Lay. Finally, we affirm the
provisional double patenting rejection of claims 1, 3, 4, 6-8, 10, and 13 over
claims 1-3 of Das ‘318.
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) (2006).
AFFIRMED

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Adams, Administrative Patent Judge, concurring.

I join with the majority’s decision to affirm the rejection of claims 1,
3, 4, 6-8, 10, and 13 under the judicially-created doctrine of obviousness-
type double patenting.
I disagree with the majority’s decision to affirm the rejection of
claims 1, 3, 4, 6 and 7 under 35 U.S.C. § 103(a). I agree, however, that
claims 8, 10, and 13 are prima facie obvious in view of the cited prior art.
However, my reasoning differs from that of the Examiner and the majority.

DISCUSSION
The first step in an obviousness analysis is to determine the meaning
and scope of each claim. Amazon.com, Inc. v. Barnes and noble.com, Inc.,
239 F.3d 1343, 1351, 57 USPQ2d 1747, 1752 (Fed. Cir. 2001). “Only when
a claim is properly understood can a determination be made whether the
claim . . . renders obvious the claimed invention.” Amazon, 239 F.3d at
1351, 57 USPQ2d 1752 (Fed. Cir. 2001). Accordingly, I provide an
interpretation of each claim on appeal below.
Further, while the majority is quick to point out that “arguments not
made are waived” (supra n. 2), I note that Appellant has no burden to rebut a
rejection of obviousness until a prima facie case has been established. In re
Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir. 1993). “In
rejecting claims under 35 U.S.C. § 103, the [E]xaminer bears the initial
burden of presenting a prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant. Id.” Rijckaert, at 1532, 28 USPQ2d at
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1956. Simply stated, “[w]hen the references cited by the [E]xaminer fail to
establish a prima facie case of obviousness, the rejection is improper and
will be overturned.” In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988).

Obviousness:
Claims 1, 4, 7, 8, and 13 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Ley and Hojeibane; or Ley and
Dinh. In addition, claims 3, 6, and 10 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over the combination of Ley, Hojeibane, and
Ndondo-Lay; or Ley, Dinh, and Ndondo-Lay.
The majority limits their analysis to independent claim 16.
Therefore, I begin my analysis there.

Claim 1:
Claim 1 is drawn to an expandable stent. The stent comprises a
plurality of segments that are “expandably interconnected” to each other in
series by a plurality of interconnection bridges. Thus, the claimed stent
comprises (1) segments and (2) interconnection bridges.

6 Supra n. 2.
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Each segment comprises7 a continuous strand of material and claim 1
provides structural requirements for this continuous strand of material.
Specifically, the continuous strand of material:
1. Is interconnected end to end so as to generally encompass a radial
space within the segment and
2. Comprises a repeating series of interconnected repeating W-shaped
strand configurations.
Claim 1 requires that the interconnected repeating W-shaped strand
configurations have a repeating dip, rise, dip, rise, loop, dip, rise, dip, rise,
loop patterned configuration.
The majority takes issue with the structural requirements of the
segments. According to the majority, the recited structure for the segments
“does not, to our knowledge, have a well-recognized meaning in the stent
art” (supra 6). Nevertheless, the majority concludes that “the claim
language does not exclude additional twists and turns, et cetera, from the
configuration, so long as the configuration satisfies the language of the
claim” (id.). If, by this statement, the majority is intimating that the terms
“including” or “comprising” permit alterations within a defined sequence
(e.g., dip, dip, rise, dip, rise, rise, loop, loop, . . . etc.), they have cited no
precedent to support this interpretation of the claim. Instead, the majority
asserts that the claim terms are given “their broadest reasonable
interpretation consistent with the Specification (supra 6). In this regard, I

7 I interpret the term “including,” as it is used in claim 1, to mean
“comprising.” See Manual of Patent Examining Procedure § 2111.03 (“The
transitional term “comprising”, which is synonymous with “including,”
“containing,” or “characterized by,” is inclusive or open-ended and does not
exclude additional, unrecited elements or method steps.”)

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note that “[a]lthough the PTO must give claims their broadest reasonable
interpretation, this interpretation must be consistent with the one that those
skilled in the art would reach.” In re Cortright, 165 F.3d 1353, 1358, 49
USPQ2d 1464, 1467 (Fed. Cir. 1999). In my opinion, the majority’s
interpretation of claim 1 is not consistent with the one that those skilled in
the art would reach.
In my opinion, when all the terms in claim 1 are considered as a
whole8 the sequence defined by the dip, rise, dip, rise, loop, dip, rise, dip,
rise, loop patterned configuration becomes clear. Specifically, each segment
comprises a single strand of material that is configured to comprise a
repeating series of interconnected repeating W-shaped configurations. As if
to teach a child to write a “W”, you start at the top and dip to the bottom,
rise to the middle, dip again, and rise again. The single strand repeatedly
follows this pattern interconnecting each “W” with a “loop.” According to
claim 1, this is the pattern of the single strand that makes up each segment.
While claim 1 requires the interconnection bridges to interconnect
each segment in series, as claim 1 is written, the interconnection bridges do
not play a part in this “W-shaped” configuration of the single stranded
segments. This is where both the Examiner’s and majority’s analysis is
flawed as it applies to Appellant’s claim 1.
Finally, claim 1 requires that at least one of the plurality of
interconnection bridges comprises a plurality of narrowings at certain points
to permit the interconnection bridge to have greater flexibility when bending

8 See Merck & Co. v. Teva Pharms. USA, Inc., 395 F.3d 1364, 1372, 73
USPQ2d 1641, 1648 (Fed. Cir. 2005) (“A claim construction that gives
meaning to all the terms of the claim is preferred over one that does not do
so.”)
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proximate the plurality of narrowings. The number of narrowings is
undefined by the claim and therefore reads on the range of 2 up to some
undefined end point.

Ley:
Ley is relied upon to teach “the repeating pattern ‘dip, rise, dip, rise,
loop, dip, rise, dip, rise, loop,’ in the form of a ‘W’” (supra 7). Ley
discloses seven different stent configurations. Both the Examiner and
majority rely on Ley’s first configuration (Answer 4-5 and supra 7
respectively). This configuration is represented by Ley’s figures 1-4 (Ley,
col. 2, ll. 29-30). Ley teaches that the stent comprises a metal tube that has
been etched or preferably laser cut to the configuration shown in figure 1
(Ley, col. 2, ll. 30-34). Ley teaches that “[t]he configuration is made up of a
series of curvilinear expansion cell elements generally indicated at 12 (see
darkened example in FIG. 3 for clarity) having relatively wide end portions
14 joined by relatively narrow center portions 16” (Ley, col. 2, ll. 35-39,
emphasis removed). Ley teaches that the cells are arranged longitudinally
and in substantially parallel rows (Ley, col. 2, ll. 39-42 and FIG. 1). These
expansion cells are equivalent to Appellant’s segments. These expansion
cells do not have Appellant’s claimed repeating W-shaped configuration.
Ley also teaches support members which can be viewed as equivalent
to Appellant’s interconnection bridges. Specifically, Ley teaches
[a] plurality of longitudinally extending elongate support
members 18 are included, one each being disposed between
adjacent rows of cells 12. Also, a plurality of circumferentially
extending support members 19, preferably substantially normal
to support members 18 are also positioned between the rows of
cells 12 to intersect portions of the support members 18 and to
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Application 10/094,866

interconnect them to the narrow center portions 16 of the cells
12.

(Ley, col. 2, ll. 42-49 and FIGS. 3-4, emphasis removed.)
Notwithstanding, Ley’s detailed disclosure of the relationship between
the cells (segments) and support members (interconnecting bridges) the
majority finds that
Ley discloses the disputed “dip, rise, dip, loop” (see Ley’s Figs.
1, 3 and 4 . . .), in which Ley illustrates the repeating pattern
“dip, rise, dip, raise, loop, dip, rise, dip, rise, loop,” in the form
of a “W”, as indicated by the Examiner (Answer 9). The dips
are labeled 14 and designated “dip,” the rises are not numbered
but are designated “rise,” and the loops are labeled 19 and
designated “loops.”

(Supra 7.)
The problem with this analysis is that what the Examiner and the
majority characterize as “loops” are derived from the support members
(interconnecting bridges) and are not derived from the cells (segments).
Stated differently, in order to arrive at Appellant’s claimed invention the
Examiner and the majority merge the segments and the interconnecting
bridges into one structure and label this hybrid structure a W-shaped
configuration with complete disregard for the structural requirements set
forth in Appellant’s claim 1 and in Ley. The majority admits as much,
asserting that
[t]he loop encompasses an area on each side of the
“circumferentially extending support members,” also
designated 19. (Col. 2, ll. 44-45.) Thus, the loop in Ley’s
figures, relied upon to satisfy the claim language, has a support
member extending from its center and also appears to have a
small indentation where the support member is secured. (See
Figs. 3 & 4.)
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(Supra 7.) It should go without saying that this is quite different from the
structure set forth in Appellant’s claim 1.
According to Appellant’s claim 1, a single strand of material makes
up each segment which comprises a repeating series of interconnected
repeating W-shaped strand configurations. Claim 1 requires that the
segments are interconnected end to end so as to generally encompass a radial
space within the segment. Interconnection bridges are used to interconnect
each segment in series. In contrast, following the majority’s rationale,
support member 19 of Ley represents the “loops” in Appellant’s claimed
configuration (supra 7). However, as clearly illustrated in Ley’s figure 3
these so called “loops” would be the same as the loops of an adjacent
segment in every other repeating pattern along the stent when viewed from
left to right. This is not what Appellant’s have claimed.
Further, this is more than a trivial difference. Ley teaches that the
stent is expanded relative to the cells. Specifically Ley discloses that
[w]hen the stent is expanded, as shown in FIG. 4, on a balloon
20 the cells 12 take on a new configuration as shown, the
members making up the stent being indicated by the same
numbers as used in FIG. 1 and FIG. 3. Again, one cell is shown
darkened for clarity.

(Ley, col. 2, ll. 53-57.) Thus, it is the cells that provide the stent with its
expandable properties, not the interconnecting bridges or support members
that simply function to lock the cells in place in substantially parallel rows
(Ley, col. 2, ll. 39-42). As the majority recognizes, the same is true of
Appellant’s claimed stent (supra 2-3, quoting page 5 of Appellant’s
Specification). Therefore, it cannot be said that the configuration of the
stent set forth in Appellant’s claim 1 is obvious in view of Ley’s stent.
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Application 10/094,866

Neither the Examiner nor the majority provide evidence establishing
that Ley teaches a segment (cell) that comprises a continuous strand of
material configured to include a repeating series of interconnected repeating
W-shaped strand configurations having a repeating dip, rise, dip, rise, loop,
dip, rise, dip, rise, loop patterned configuration as is required by Appellant’s
claim 1. Instead, all the Examiner and the majority have demonstrated is
that Ley teaches segments (cells) and associated support members
(interconnecting bridges) that together form a stent configuration that
approximates Appellant’s claimed structure. This rationale is clearly
illustrated by the “first pattern” and “second pattern” annotation of Fig. 1
(supra 8). This is, however, not what Appellant’s have claimed.
As set forth in KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007).
a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was,
independently, known in the prior art. Although common sense
directs one to look with care at a patent application that claims
as innovation the combination of two known devices according
to their established functions, it can be important to identify 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.

Both the Examiner and the majority rely on Ley to teach a stent within
the scope of Appellant’s claimed invention. However, as discussed above,
this reliance on Ley is misplaced. I recognize the Examiner’s and the
majority’s reliance on Hojeibane and Dinh to teach that it would have been
prima facie obvious to modify Ley’s stent to include a plurality of narrowing
in the interconnection bridge (Answer 6-8; supra 13-14). However, neither
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Application 10/094,866

the Examiner nor the majority explain how Hojeibane and Dinh make up for
the deficiencies in Ley as discussed above. Accordingly, it is my opinion
that the Examiner failed to meet his initial burden9 of establishing a prima
facie case of obviousness. Similarly, I find that the majority’s analysis is not
supported by the factual evidence on this record. Accordingly, I would
reverse the rejection of claim 1 under 35 U.S.C. § 103(a) over the
combination of Ley and Hojeibane or Ley and Dinh.

Claim 4:
While the majority focuses on claim 1, I note that independent claim 4
does not require the W-shaped strand configuration set forth in claim 1. To
the contrary, independent claim 4 requires that each segment comprises a
continuous strand of material that:
1. Is interconnected end to end so as to generally encompass a radial
space within the segment and
2. Comprises a repeating series of interconnected repeating S-shaped
strand configurations.
The remainder of claim 4 is the same as claim 1.
Neither the Examiner nor the majority favor this record by directing
attention to a teaching in Ley of a stent having an S-shaped strand
configuration. “In rejecting claims under 35 U.S.C. § 103, the [E]xaminer
bears the initial burden of presenting a prima facie case of obviousness.
Only if that burden is met, does the burden of coming forward with evidence
or argument shift to the applicant.” Rijckaert, at 1532, 28 USPQ2d at 1956,

9 The initial burden of presenting a prima facie case of obviousness rests on
the Examiner. Oetiker, at 1445, 24 USPQ2d at 1444.

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Application 10/094,866

citation omitted. Having failed to address the specific limitations of this
claim, it cannot be said that the Examiner met his burden of establishing that
claim 4 is prima facie case obviousness over the combination of Ley and
Hojeibane or Ley and Dinh. If the Examiner fails to establish a prima facie
case, the rejection is improper and will be overturned. Fine, at 1074, 5
USPQ2d at 1598. Accordingly, I would reverse the rejection of claim 4
under 35 U.S.C. § 103(a) over the combination of Ley and Hojeibane or Ley
and Dinh.

Claim 7:
Claim 7 depends from and further limits the continuous strand of
material set forth in claim 4 to be configured to also comprise a repeating
series of interconnected repeating W-shaped strand configurations having a
repeating dip, rise, dip, rise, loop, dip, rise, dip, rise, loop patterned
configuration. While claim 7 permits the continuous strand to include both
S- and W-shaped strand configurations, the use of the term “including” or
“comprising” does not permit alterations (e.g., additional twists and turns, et
cetera) within the defined S- and W-shaped configurations. Nevertheless,
having failed to identify any disclosure in the evidence relied upon to teach a
stent comprising an S-shaped configuration, the Examiner failed to establish
a factual basis to support the rejection. Accordingly, I would reverse the
rejection of claim 7 under 35 U.S.C. § 103(a) over the combination of Ley
and Hojeibane or Ley and Dinh.

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Claims 3 & 6:
Claim 3 depends from claim 1 and claim 6 depends from claim 4.
Claims 3 and 6 both depend from and further limit the continuous strand of
material of their respective independent claim to have an outer surface
including cavities at certain points in the strand that are at least partially
filled with a composition containing a medicinal agent selected to provide
medical desirable effects upon being positioned within a patient.
The Examiner finds that the combination of Ley and Hojeibane, or
Ley and Dinh “fails to disclose cavities containing medicament as claimed”
(Answer 8). To make up for this deficiency the Examiner relies on Ndondo-
Lay to teach that is was well known in the art “to put medicament-containing
cavities in similar stents. . .” (id.). Ndondo-Lay, however, fails to make up
for the deficiencies in the combination of Ley and Hojeibane, or Ley and
Dinh. Accordingly, I would reverse the rejection of claims 3 and 6 under 35
U.S.C. § 103(a) over the combination of Ley, Hojeibane, and Ndondo-Lay;
or Ley, Dinh, and Ndondo-Lay.

Claims 8, 10, and 13:
Claims 8, 10, and 13 stand on a different footing.

Claim 8:
Claim 8 is drawn to a stent that comprises (1) segments and (2)
interconnection bridges. Claim 8 provides structural requirements for the
relationship between the segments and the interconnection bridges.
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Specifically, each of the segments has a plurality of individual
expansion cells that:
(1) comprise a continuous strand of a material; and
(2) are radially interconnected to form a ring of individual expansion
cells.
More specifically, the individual expansion cells are interconnected to each
other in series by one of a plurality of interconnection bridges.
Each segment is interconnected to an adjacent segment by one of the
plurality of interconnection bridges.
Claim 8 also requires that the continuous strand of material is
deformable such that the ring can be deformed from a first configuration,
wherein each ring has a first circumference and each expansion cell has a
first radial length, to a second configuration, wherein each ring has a second
circumference greater than the first circumference and each expansion cell
has a second radial length greater than the first radial length.
Claim 8 further requires at least one of the plurality of interconnection
bridges to comprise a plurality of narrowings at certain points in the
interconnection bridge that permit the interconnection bridge to have greater
flexibility when bending proximate the plurality of narrowings.
In addition to each individual expansion cell comprising a continuous
strand of material, claim 8 further requires that the continuous strand of
material in each segment is interconnected with itself so as to generally
encompass a radial space within the respective segment.
As I understand claim 8, the stent comprises segments and
interconnection bridges. Each segment comprises a plurality of individual
expansion cells interconnected to each other by interconnection bridges.
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Therefore, each individual expansion cell within each segment comprises a
continuous strand of material that is interconnected to itself to generally
encompasses a radial space within the segment. Interconnection bridges are
used to connect each individual expansion cell to another within each
segment and to adjacent segments. The continuous strand of material is
deformable to allow individual expansion cells to exhibit two configurations,
wherein the circumference of the second “expanded” configuration is greater
than that of the first configuration. In addition, the claim requires that at
least one of the interconnection bridges comprises a plurality of narrowings
at certain points in the interconnection bridge to permit the interconnection
bridge to have greater flexibility when bending proximate the plurality of
narrowings.
Ley teaches a stent that “is made up of a series of curvilinear
expansion cell elements generally indicated at 12 (see darkened example in
FIG. 3 for clarity) having relatively wide end portions 14 joined by relatively
narrow center portions 16” (Ley, col. 2, ll. 35-39, emphasis removed). Ley
teaches that the cells are arranged longitudinally and in substantially parallel
rows (Ley, col. 2, ll. 39-42 and FIG. 1). These expansion cells (e.g., element
12 in Ley’s FIG. 3) are equivalent to Appellant’s individual expansion cells.
Ley also teaches support members which can be viewed as equivalent
to Appellant’s interconnection bridges. Specifically, Ley teaches
[a] plurality of longitudinally extending elongate support
members 18 are included, one each being disposed between
adjacent rows of cells 12. Also, a plurality of circumferentially
extending support members 19, preferably substantially normal
to support members 18 are also positioned between the rows of
cells 12 to intersect portions of the support members 18 and to
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interconnect them to the narrow center portions 16 of the cells
12.

(Ley, col. 2, ll. 42-49 and FIGS. 3-4, emphasis removed.)
Ley’s expansion cells:
(1) comprise a continuous strand of a material; and
(2) are radially interconnected to form a ring of individual expansion
cells.
More specifically, Ley’s individual expansion cells are interconnected to
each other in series by one of a plurality of interconnection bridges.
Accordingly, Ley teaches a configuration that is consistent with Appellant’s
segments. Each of Ley’s segments is interconnected to an adjacent segment
by one of the plurality of interconnection bridges.
Like the stent of claim 8, the continuous strand of material used in
Ley’s stent is deformable such that the ring (element 12 of Ley’s FIG. 3) can
be deformed from a first configuration, wherein each ring has a first
circumference and each expansion cell has a first radial length, to a second
configuration, wherein each ring has a second circumference greater than the
first circumference and each expansion cell has a second radial length
greater than the first radial length (Cf. Ley FIG. 3 and FIG. 4).
Ley does not teach a plurality of narrowings in at least one
interconnection bridge to provide greater flexibility when bending proximate
the narrowings. However, Hojeibane and Dinh make up for this deficiency
in Ley.
Hojeibane teaches a flexible stent wherein connectors are made
narrower at their midpoints to enhance the flexure at this point (Hojeibane,
col. 6, ll. 30-44). Similarly, Dinh teaches a stent that comprises a unit cell
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that includes, inter alia, a connecting bar (Dinh, col. 4, ll. 5-15) or
connecting segment (Dinh, col. 6, ll. 62-64). According to Dinh, “[t]he
connecting segment most broadly is any means to join one unit cell to
another, to connect one plurality of unit cells to another for formation of a
stent from the unit cells of the invention (Dinh, col. 6, l. 64 – col. 7, l. 1). As
I understand it, Dinh’s connecting bars and segments are equivalent to
Appellant’s interconnection bridges. According to Dinh, the flexibility of
the unit cell can be varied by changing the length and width of the unit cell
components, e.g. the connecting bar (Dinh, col. 5, ll. 63-66). No doubt,
neither Hojeibane nor Dinh expressly teach a plurality of narrowings,
however, both references teach a narrowing in the interconnection bridges
results in a more flexible stent. Common sense would dictate that the
flexibility results from bending proximate the narrowings. 10 In addition,
Dinh teaches that the dimensions of the entire connecting bar or segment can
be varied (Dinh, col. 6, ll. 29-36).
In my opinion, a person of ordinary skill in the art reading the
combined teachings of Hojeibane and Dinh would recognize that to obtain a
stent with optimal flexibility the number of narrowings in any given
interconnection bridge must be optimized. As set forth in In re Huang,
100 F.3d 135, 139, 40 USPQ2d 1685, 1688 (Fed. Cir. 1996),
[t]his court and its predecessors have long held . . . that even
though applicant’s modification results in great improvement
and utility over the prior art, it may still not be patentable if the

10 Evidence is to be viewed through the lens of a person of ordinary skill in
the art with consideration of common knowledge and common sense.
Dystar Textilfarben GMBH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1367, 80 USPQ2d 1641, 1650 (Fed. Cir. 2006).

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modification was within the capabilities of one skilled in the
art, unless the claimed ranges “produce a new and unexpected
result which is different in kind and not merely in degree from
the results of the prior art.” In re Aller, 42 C.C.P.A. 824, 220
F.2d 454, 456, 105 USPQ 233, 235 (1955); see In re Woodruff,
919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936-37 (Fed. Cir.
1990).

Therefore, it is my opinion that a minor modification of the prior art, such as
optimizing the number of narrowings in an interconnection bridge to include
more than one does not distinguish the claimed product from the prior art.
See KSR, at 1741, 82 USPQ2d at 1396 (It is proper to “take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.”). “When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable solutions, a
person of ordinary skill has good reason to pursue the known options within
his or her technical grasp. If this leads to the anticipated success, it is likely
the product not of innovation but of ordinary skill and common sense.”
KSR, at 1732, 82 USPQ2d at 1397.
I am not persuaded by Appellants’ assertion that neither Hojeibane
nor Dinh teach a plurality of narrowings (Br. 7 and 8). Instead, based on the
foregoing discussion, it is my opinion that it would have been prima facie
obvious to a person of ordinary skill in the art at the time the invention was
made to modify Ley’s stent to include a plurality of narrowings in at least
one interconnection bridge for the expected benefit of increasing the
flexibility of the stent as taught by both Hojeibane and Dinh.
On reflection, it is my opinion that the stent set forth in claim 8 is
prima facie obvious under 35 U.S.C. § 103(a) over the combination of Ley,
Hojeibane, and Dinh.
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Claim 13:
Claim 13 depends from claim 8 and further requires that each pair of
adjacent segments are interconnected with one another by at least two
interconnection bridges. As discussed above, the combination of Ley,
Hojeibane, and Dinh teach the stent of claim 8. Dinh further teaches that
“[t]he number and position of the connecting segments joining pluralities
can be varied to alter the flexibility of the stent, as can the structure of the
connecting segment itself . . .” (Dinh, col. 7, ll. 8-11). Stated differently, in
addition to teaching narrowings in the interconnection bridges, Dinh teaches
that the number of interconnection bridges interconnecting segments can be
varied to alter the flexibility of the stent.
In my opinion, it would have been prima facie obvious to a person of
ordinary skill in the art at the time the invention was made to modify Ley’s
stent to include a plurality of narrowings in at least one interconnection
bridge and more than one interconnection bridge for the expected benefit of
optimizing the flexibility of the stent as taught by both Hojeibane and Dinh.
On reflection, it is my opinion that the stent set forth in claim 13 is
prima facie obvious under 35 U.S.C. § 103(a) over the combination of Ley,
Hojeibane, and Dinh.

Claim 10:
Claim 10 depends from and further limits the continuous strand of
material of claim 8 to have an outer surface including cavities at certain
points in the strand that are at least partially filled with a composition
containing a medicinal agent selected to provide medical desirable effects
upon being positioned within a patient. As discussed above, the
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combination of Ley, Hojeibane, and Dinh teach the stent of claim 8. The
combination of Ley, Hojeibane, and Dinh does not teach a stent wherein the
outer surface of the continuous strand of material comprises cavities that
area at least partially filled with a composition containing a medicinal agent.
However, Ndondo-Lay makes up for this deficiency in the combination of
Ley, Hojeibane, and Dinh.
Ndondo-Lay teaches a stent comprising a plurality of cavities, e.g.,
small holes or craters that are pre-filled with a biologically active agent prior
to placement on the stent in the patient (Ndondo-Lay, col. 7, ll. 30-38).
According to Ndondo-Lay, once the stent is placed in a patient, the
biologically active agent will be released from the stent at the site of
placement, thereby having its greatest effects directly at the desired location,
without prior dilution throughout the body of the patient (Ndondo-Lay, col.
7, ll. 38-43).
Based on the foregoing, it is my opinion that it would have been prima
facie obvious to a person of ordinary skill in the art at the time the invention
was made to modify the stent taught by the combination of Ley, Hojeibane,
and Dinh to include small holes or craters that are at least partially filled
with a biologically active agent, e.g., a medicament, that will benefit the
patient upon release from the stent.
Accordingly, it is my opinion that the stent set forth in claim 10 is
prima facie obvious under 35 U.S.C. § 103(a) over the combination of Ley,
Hojeibane, Dinh, and Ndondo-Lay.

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Obviousness-type double patenting:
The claims are discussed above. Since Appellant did not address it,
the majority is correct in summarily affirming the provisional rejection of
claims 1, 3, 4, 6-8, 10, and 13 under the judicially created doctrine of
obviousness-type double patenting.

CONCLUSION
I concur with the majority’s decision to affirm the rejection of claims
1, 3, 4, 6-8, 10, and 13 under the judicially-created doctrine of obviousness-
type double patenting.
I dissent from the majority’s decision to affirm the rejection of claims
1, 3, 4, 6 and 7 under 35 U.S.C. § 103(a).
I concur with the majority’s conclusion that claims 8 and 13 are prima
facie obvious in view of Ley, Hojeibane and Dinh; and that claim 10 is
prima facie obvious in view of Ley, Hojeibane, Dinh and Ndondo-Lay.
However, my reasoning differs from that of the Examiner and the majority.

Ssc

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Pondview Plaza
5850 Opus Parkway, Suite 114
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