Ex Parte Gregorich et al

Board of Patent Appeals and Interferences

Jul 11, 2012

11138022 (B.P.A.I. Jul. 11, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DANIEL GREGORICH and MICHAEL P. MEYER
__________

Appeal 2011-005145
Application 11/138,022
Technology Center 3700
__________

Before MELANIE L. McCOLLUM, JEFFREY N. FREDMAN, and
STEPHEN WALSH, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a stent.
The Examiner rejected the claims as anticipated. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

Appeal 2011-005145
Application 11/138,022

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Statement of the Case
Background
“Stents may be used to reinforce body vessels and to prevent
restenosis following angioplasty in the vascular system. They may be self-
expanding, expanded by an internal radial force, such as when mounted on a
balloon, or a combination of self-expanding and balloon expandable” (Spec.
1, ll. 25-28). The Specification teaches that when “treating a bifurcated
vessel, it may desirable to use a stent having a side branch opening
configured to provide fluid communication between the primary vessel and a
secondary or branch vessel of the bifurcation” (Spec. 2, ll. 10-13).
The Claims
Claims 1-3 and 5-23 are on appeal. Claim 1 is representative and
reads as follows:
1. A stent having a longitudinal axis and comprising
a side branch cell, the side branch cell defined by a
plurality of petals including a first petal, each petal
comprising a plurality of straight struts and at least two
turns, each petal having a central axis, the central axis of
the first petal extending in a direction nonparallel to the
stent longitudinal axis, wherein at least two of said
straight struts of the first petal extend parallel to said
stent longitudinal axis when the stent is unexpanded.

The issue

The Examiner rejected claims 1-3 and 5-23 under 35 U.S.C. § 102(a)/
102(e) as anticipated by Davidson
1
(Ans. 4-5).

1
Davidson et al., US 2004/0267352 A1, published Dec. 30, 2004.
Appeal 2011-005145
Application 11/138,022

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The Examiner finds that Figure 23 of Davidson “shows a stent with a
side branch having a plurality of petals defined by at least two straight struts
and at least two turns” (Ans. 4). The Examiner annotates Figure 23 as
shown below:

The Examiner finds that “the petals are about the side branch opening
established in the stent of Davidson and can be said to have petals that
„bound‟ this side branch. Thus, Davidson does have petals of a side branch
that have a non-parallel central axis and struts forming the petal that are
straight” (id. at 7).
Appellants contend that the “rejection does not positively identify the
claimed „side branch cell,‟ the „first petal‟ or two straight struts of the first
petal that „extend parallel to said stent longitudinal axis,‟ as recited in claim
1” (App. Br. 10). Appellants contend that “Davidson does teach a cell that
would be considered a side branch cell by a person of ordinary skill in the art
- i.e. the center cell in the excerpt from Davidson Fig. 23 above; however,
the center cell of Davidson does not meet the limitations of claim 1” (id.).
Appellants contend that the “claimed stent provides a different design
for a side branch structure wherein the petals are capable of changing shape
more similarly to the main branch portion of the stent” (Reply Br. 4).
Appeal 2011-005145
Application 11/138,022

4
The issue with respect to this rejection is: Does the evidence of record
support the Examiner‟s finding that Davidson anticipates the claimed stent?
Findings of Fact
1. Davidson teaches a “stent for use in a bifurcated body lumen
having a main branch and a side branch” (Davidson 2 ¶ 0014).
2. Figure 23 of Davidson is reproduced below:

“FIG. 23 is a flat view of another embodiment of an unexpanded stent”
(Davidson 3 ¶ 0038).
3. Davidson teaches, regarding Figure 23, that “[s]tent 99
comprises a main stent body 14 and another embodiment of a branch portion
30” (Davidson 7 ¶ 0082).
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Application 11/138,022

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4. Davidson teaches that “stent 99 has a branch portion 30
including a support member 108 surrounding three concentric rings 110,
112, 114 instead of two” (Davidson 7 ¶ 0082).
5. Figure 24 of Davidson is reproduced below:

“FIG. 24 is a view of an expandable branch portion of the stent of FIG. 23
in the expanded condition” (Davidson 3 ¶ 0039).
Principles of Law
“To anticipate a claim, a prior art reference must disclose every
limitation of the claimed invention, either explicitly or inherently.
Anticipation is an issue of fact, and the question [of] whether a claim
limitation is inherent in a prior art reference is a factual issue.” In re
Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997) (citations omitted).
Analysis
Claim 1 requires a stent with a “side branch cell” where the “side
branch cell” is defined by petals and “wherein at least two of said straight
struts of the first petal extend parallel to said stent longitudinal axis when the
stent is unexpanded.”
Appeal 2011-005145
Application 11/138,022

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The Examiner, relying upon Figure 23 of Davidson, annotates Figure
23 to identify the petals as shown below:

(Ans. 6). When compared to Figure 23 of Davidson, the region identified by
the Examiner as the petals of claim 1 is not located within branch portion 30.
Instead, the region identified by the Examiner represents a portion of the
stent adjacent to and outside of branch portion 30. As Davidson teaches,
“stent 99 has a branch portion 30 including a support member 108
surrounding three concentric rings 110, 112, 114 instead of two” (Davidson
7 ¶ 0082; FF 3).
Figure 24 more clearly shows that the entire side branch is
circumscribed by support member 108, within which are found concentric
rings 110, 112, and 114 (FF 2, 5). Figure 24 shows that stent portions
external to support member 108 are part of the stent itself, and are not part of
the side branch cell with which claim 1 is concerned (FF 5).
We agree with Appellants that the serpentine stent structure identified
by the Examiner as satisfying the limitations of claim 1 is not reasonably
interpreted as a portion of a “side branch cell” and therefore cannot serve to
anticipate claim 1. Instead, the region identified by the Examiner is most
reasonably interpreted as a portion of the main stent, particularly in light of
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Application 11/138,022

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Figure 24, where this region is not shown to fall within the expandable
branch portion of the stent of Figure 23 as shown by Davidson (FF 2-5).
While independent claims 13 and 14 are drafted with slightly different
language, both of these claims also require petals which define a side branch
opening, where each petal has a longitudinal axis parallel to the longitudinal
axis of the unexpanded stent body. Consequently, the analysis relative to
claim 1 directly applies to these claims, since the petals at issue must define
a side branch opening, and the petals identified by the Examiner as
satisfying the orientation limitations are not part of the side branch opening
(FF 2-5).
Conclusion of Law
The evidence of record does not support the Examiner‟s finding that
Davidson anticipates the claimed stent.
SUMMARY
In summary, we reverse the rejection of claims 1-3 and 5-23 under 35
U.S.C. § 102(a)/ 102(e) as anticipated by Davidson.

REVERSED

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