Ex Parte LenzDownload PDFBoard of Patent Appeals and InterferencesJul 23, 201211289085 (B.P.A.I. Jul. 23, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte JASON T. LENZ ____________ Appeal 2010-004668 Application 11/289,085 Technology Center 3700 ____________ Before LINDA E. HORNER, MICHAEL C. ASTORINO, and JOHN W. MORRISON, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004668 Application 11/289,085 2 STATEMENT OF THE CASE The Appellant appeals under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 24-37 and 39. Claims 1-9 have been cancelled, claims 10-23 have been withdrawn, and claim 38 has been objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Final Rej. 11. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We AFFIRM and ENTER A NEW GROUND OF REJECTION PURSUANT TO OUR AUTHORITY UNDER 37 C.F.R. § 41.50(b) (2011). REJECTIONS Claims 24-27 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Claim 24 is rejected under 35 U .S.C. § 112, second paragraph, as indefinite. Claims 24-37 and 39 are rejected under 35 U.S.C. § 102(e) as anticipated by, or, in the alternative, under 35 U.S.C. § 103(a) as obvious over, Thornton (US 6,551,350 B1, issued Apr. 22, 2003). CLAIMED SUBJECT MATTER The claimed subject matter is directed to stents that “are radially expandable endoprostheses which are typically intravascular implants capable of being implanted transluminally and enlarged radially after being introduced percutaneously.” Spec. 1. More specifically, the claimed subject Appeal 2010-004668 Application 11/289,085 3 matter is directed to stents that are “juxtaposed or extend[ ] across a bifurcation in an artery or vein”, i.e., a bifurcated stent. Spec. 2. Claims 24, 28, and 39 are the independent claims on appeal. Claim 24 is illustrative of the subject matter on appeal, and recites: 24. A bifurcated stent, the bifurcated stent comprising: a first circumferential section of stent material, the first circumferential section having a longitudinal length, the first circumferential section having a pre-crimped state and a crimped state, the first circumferential section comprising a first portion and a second portion, the first and second portions having substantially the same longitudinal length as the first circumferential section; the first portion comprising only one layer of stent material when the first circumferential section is in the pre-crimped state, the first portion comprising at least two layers of stent material when the first circumferential section is in the crimped state; and the second portion comprising only one layer of stent material when the first circumferential section is in the pre-crimped state and when the first circumferential section is in the crimped state. OPINION Written Description Requirement The Examiner determines that there is no support in the written description for the “limitations with respect to ‘longitudinal length substantially equal to the longitudinal length of the firs[t] circumferential section…’” Ans. 4. It appears that the Examiner is referring to the following recitation of claim 24, “the first and second portions having substantially the same longitudinal length as the first circumferential section.” Appeal 2010-004668 Application 11/289,085 4 The Appellant asserts that “the entirety of the application as filed provides support for the claims as amended” because it is common knowledge that an object has a length and “the drawings as filed show objects with longitudinal lengths.” App. Br. 13. The Appellant contends that the claimed limitation directed to the longitudinal length of the first circumferential section of stent material is supported because it is implied in the written description. See App. Br. 13-15. To satisfy the written description requirement, “the [original] specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). The Appellant correctly points out that one of ordinary skill in the art would understand that Figure 1a depicts a longitudinal length of a bifurcated stent 10, and that the cross-sectional views of the Figures 3a, 3b, and 5b imply that a section of the bifurcated stent 10 includes a longitudinal length. App. Br. 13-15. Furthermore, included in the longitudinal length is the claimed “first portion”, which appears as the first crimp portion 80 (App. Br. 8, 14); and, the claimed “second portion” appears as the portion of the stent 10 that is not the overlapped portion 50. See figs. 3a, 3b, 5b. Thus, the rejection of claims 24-27 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement is not sustained. Indefiniteness The Examiner determines in the Answer at page 5, with emphasis added: Appeal 2010-004668 Application 11/289,085 5 The phrase "section having a longitudinal length" in claim 24 is a relative phrase which renders the claim indefinite. This phrase is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular ... ["]a first portion and a second portion[,] the first and second portions having substantially the same longitudinal length as the first circumferential section["] is unclear. The Appellant correctly contends “that one of ordinary skill reading independent claim 24 would understand the boundaries of the subject matter of claim 24.” App. Br. 16. The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). As the Appellant points out, claim 24 recites “a first circumferential section . . . having a longitudinal length . . . the first circumferential section comprising a first portion and a second portion, the first and second portions having substantially the same longitudinal length as the first circumferential section” and that limitation makes clear that “the lengths of the first and second portions of the object[, i.e., the first circumferential section,] are limited to being substantially the same as the longitudinal length of the first circumferential section.” App. Br. 16. Thus, the rejection of claim 24 under 35 U.S.C. § 112, second paragraph, as indefinite is not sustained. Interpretation of claims 24, 28, and 39 The Examiner determines that the claims are constructed as product- by-process claims. Ans. 5-6. The Appellant “submits that the instant claims Appeal 2010-004668 Application 11/289,085 6 are not product by process claims.” App. Br. 20. We agree with the Appellant that the claims are not product-by-process claims. The Examiner appears to construe the claims using an alternate construction. In this alternate construction, the Examiner determines that “Appellant's claims are directed to an apparatus (bifurcated stent) and the claims contain functional description of manipulations to the stent.” Ans. 14. We agree with this alternative construction of the claims. Independent claims 24 and 28 recite “[a] bifurcated stent, the bifurcated stent comprising . . . .” App. Br. 37, 38. Thereafter, claim 24 calls for a first circumferential section of the bifurcated stent to have a “pre- crimped state” and “crimped state.” App. Br. 37. The Appellant asserts that “crimped” is a term of art, and contend that “[w]ith a proper understanding of the ‘crimped state’ it is clear that a ‘pre-crimped state’ is before the stent is in the crimped state.” App. Br. 21. However, whether the “state” of a section of the stent is “pre-crimped” or “crimped”, such would not change the structure of the stent, but merely call for the capability of the stent structure to undergo the claimed changes to the shape of the bifurcated stent. As determined by the Examiner, this change of shape is a manipulation of the structure of the bifurcated stent (Ans. 14), which does not change the underlying structure of the bifurcated stent. Furthermore, the remainder of the claim terminology, e.g., “first portion”, “second portion”, “first circumferential end”, “second circumferential end”, “radially adjacent”, and “circumferentially separated”, as recited in claim 24 and/or 28, do not add structure to the claimed stent, but merely provide nomenclature to specify the stent’s manipulated form. Appeal 2010-004668 Application 11/289,085 7 Similarly, independent claim 39 recites “[a] bifurcated stent, the bifurcated stent having an unexpanded state and an expanded state, the bifurcated stent comprising . . . .” App. Br. 39. The terms “unexpanded state” and “expanded state” are terms that relate to the manipulation of the bifurcated stent, and thus merely call for the capability of the stent structure to undergo the claimed changes to the shape of the bifurcated stent. Additionally, the terms “first portion”, “second portion”, “third portion”, “fourth portion”, “first layer”, “second layer”, “first flap”, “second flap”, and “circumferentially adjacent”, as recited in claim 39, do not add structure to the claim, but merely provide nomenclature to specify the stent’s manipulated form. The manipulations of the stent into different states or formations are functional characteristics of the bifurcated stent structure. Moreover, dependent claims 25-27, 29, 30, and 33-37 continue to add nomenclature to the manipulated form of the bifurcated stent, and are functional characteristics of the bifurcated stent structure. Dependent claims 31 and 32 depend from claims 28, 29, and 30, and call for “the first circumferential section having an expandable side branch” (App. Br. 38), the “expandable side branch” is structural feature of the bifurcated stent. Anticipation & Obviousness The Examiner finds in the Answer at page 14, with emphasis added: [The] Appellant's basic structure of a bifuracated [sic] stent (as seen in figures 1a and 1b of the application) is fully met by the prior art to Thornton. Thornton's bifurcated stent is manipulated (folded or crushed) prior to delivery to present the stent in a collapsed or compressed configuration within the delivery device (Note column 2, lines 7-10 and column 8, lines 28-38) Appeal 2010-004668 Application 11/289,085 8 for endoluminal placement. Examiner maintains that since Thornton does compress (e.g. folding) the stent prior to its delivery, the stent is therefor[e] capable of being folded in the manner as desired by the [A]ppellant. Examiner relates [A]ppellant[’]s claims to a piece of paper (corresponds to the stent) that may be folded to various desired configurations such as an airplane, multiple folds fan or simply quartered folds thereby reducing the size of the paper for placement in a pocket. Arguably, no matter which folding pattern one desires, the basic structure is simply a piece of paper (i.e. stent). The Appellant contends that “[n]o case law or other legal source has by [sic been] cited by the Examiner in support of this novel claim interpretation” that “the structure of a piece of paper that is folded in any particular way is disclosed by a piece of paper that is not folded because the piece of paper is capable of being folded in that particular way.” Reply Br. 13. However, where the Patent Office has reason to believe that a claimed functional limitation is an inherent characteristic of the prior art, the burden shifts to the Appellant to show that the prior art does not possess that characteristic. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)). See also In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The Appellant acknowledges that Thornton discloses a bifurcated stent. App. Br. 21, citing Thornton, col. 17, l. 35; see Ans. 6. The Appellant acknowledges Thornton’s bifurcated stent is disclosed as being in “pre- crimped state”1 and is capable of being folded by asserting, “before the graft[, i.e., Thornton’s bifurcated stent graft,] is folded to form the zone of reduced diameter (809) (‘pre-crimped state’), . . .” App. Br. 32-33 1 The Appellant asserts “that a “pre-crimped state” is before the stent is in the crimped state.” App. Br. 21. Appeal 2010-004668 Application 11/289,085 9 (emphasis added). Further, when Thornton’s bifurcated stent in the “pre- crimped state” it is also in an “unexpanded state.” The Appellant also acknowledges that Thornton’s bifurcated stent in Figure 22 is in a “crimped state” (App. Br. 31, 32), and Thornton’s bifurcated stent in Figure 18 as “being expanded” (App. Br. 21), and as such being in an “expanded state.” For the foregoing reasons, Thornton’s disclosure provides a sound basis for the Examiner’s belief that the claimed functional limitations, i.e., the claimed manipulations of the claimed bifurcated stent, are an inherent characteristic of Thornton’s bifurcated stent. As such, the burden shifts to the Appellant to show that the prior art does not possess the claimed functional characteristics. The Appellant contends that Thornton does not disclose the manipulated forms as recited in the claims. App. Br., passim, Reply Br., passim. However, that argument is not persuasive, as it does not show that the prior art does not possess that claimed functional characteristics, i.e., that Thornton’s bifurcated stent is not capable of taking on the claimed manipulated forms. As for claims 31 and 32, both claims depend from claims 28, 29, and 30, and recite “the first circumferential section having an expandable side branch.” App. Br. 38 (emphasis added). Thornton discloses an expandable side branch in the form of the contralateral leg 730, which is adapted for delivery in a compressed state to a bifurcation site within a body and is self- expanding. Col. 17, ll. 41-48, col. 19, ll. 14-16, figs. 14A, 18, 22. Additionally, claim 31 recites “the first portion of the first circumferential section forming at least a portion of the expandable side branch,” and claim 32 recites “the expandable side branch having a circumferential position Appeal 2010-004668 Application 11/289,085 10 opposite from a circumferential position of the first portion of the first circumferential section,” both recitations include manipulations and/or nomenclature of the bifurcated stent. Thornton’s disclosure provides sufficient evidence for a sound basis to believe that the claimed functional limitations are inherent characteristics of Thornton’s bifurcated stent. See Ans. 8. As such, the burden shifts to the Appellant to show that the prior art does not possess the claimed functional characteristics. Because the reasoning relied on by the Board to sustain the rejection of claims 24-37 and 39 based on Thornton differs somewhat from the reasoning relied on by the Examiner’s application of Thornton under a product-by-process construction of the claims, we designate our affirmance of the rejection of claims 24-37 and 39 under 35 U.S.C. § 102(e) as a NEW GROUND OF REJECTION so as to provide the Appellant with a full and fair opportunity to respond to the thrust of the rejection. As for the Examiner’s alternative rejection of claims 24-37 and 39 under 35 U.S.C. § 103(a) as obvious over Thornton, for the reasons set forth above we likewise affirm the alternative rejection because a disclosure that anticipates under 35 U.S.C. § 102 also renders the claim unpatentable under 35 U.S.C. § 103, i.e., anticipation is the epitome of obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974) (citation omitted); and In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). DECISION We REVERSE the rejection of claims 24-27 under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement Appeal 2010-004668 Application 11/289,085 11 and the rejection of claim 24 under 35 U.S.C. § 112, second paragraph, as indefinite. We AFFIRM the rejection of claims 24-37 and 39 under 35 U.S.C. § 102(e) as anticipated by, and, in the alternative, under 35 U.S.C. § 103(a) as obvious over, Thornton. We designate our affirmance of the rejection under 35 U.S.C. §§ 102(e)/103 of claims 24-37 and 39 as a NEW GROUND OF REJECTION pursuant to 37 C.F.R. § 41.50(b) (2011). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the Examiner, in which event the proceeding will be remanded to the Examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) Klh Copy with citationCopy as parenthetical citation