Ex Parte Lenz

Board of Patent Appeals and Interferences

Jul 23, 2012

11289085 (B.P.A.I. Jul. 23, 2012)

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

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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claims 10-23 have been withdrawn, and claim 38 has been objected to as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
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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.”
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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:
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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
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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.
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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)
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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.
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(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
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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
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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)

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