Ex Parte Stoltze et al

Patent Trial and Appeal Board

Aug 28, 2013

10020592 (P.T.A.B. Aug. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/020,592 12/12/2001 Jacob Stoltze 760-46
CIP/PCT/USA/CON 2
6947
7590 08/28/2013
Salvatore J. Abbruzzese
HOFFMANN & BARON, LLP
6900 Jericho Turnpike
Syosset, NY 11791
EXAMINER
EREZO, DARWIN P
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
08/28/2013 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JACOB STOLTZE and JORGEN KAMSTRUP-LARSEN
__________

Appeal 2011-012405
Application 10/020,592
Technology Center 3700
__________

Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
JOHN A. EVANS, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 41 and 42.2 We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

1 The Real Party in Interest is Boston Scientific Scimed, Inc. (App. Br. 2.)
2 Claims 25-35 and 43-46 are also pending, but have been indicated as
having allowable subject matter (App. Br. 1).
Appeal 2011-012405
Application 10/020,592

2
STATEMENT OF THE CASE
Claim 41 is the only independent claim on appeal, and reads as
follows:
41. A method of forming a stent delivery device comprising the steps of:
providing a catheter having an inflatable portion;
placing a stent on the inflatable portion; and
releasably retaining said stent to said inflatable portion by
depressions formed therein.

The following ground of rejection is before us for review:
Claims 41 and 42 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Wiktor3 (Ans. 3). As Appellants do not argue the claims
separately, we focus our analysis on claim 41, and claim 42 stands or falls
with that claim. 37 C.F.R. § 41.37(c)(1)(vii).

ANALYSIS
The Examiner rejects claims 41 and 42 as being anticipated by Wiktor
(Ans. 3-4). Relying on Figure 2 of Wiktor, the Examiner finds that the stent
is releasably retained by depressions formed on the inflatable portion of the
balloon catheter (id. at 4). The Examiner finds that the “process of crimping
the stent into the balloon depresses a portion of that balloon, as shown in the
above mentioned stress lines in Fig. 2 and Fig. 4 (note that inflatable balloon
is no longer smooth in the areas where the stent has been crimped on)” (id.
at 4-5).
Appellants argue that “the stent of Witkor is not releasably retained by
depressions formed in the Witkor balloon (inflatable portion)” (App. Br. 4).

3 Wiktor, US 4,969,458, issued Nov. 13, 1990.
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Appeal 2011-012405
Application 10/020,592

4
reversing loops 6 have been crimped to allow for the balloon to be gripped
by the stents, thus preventing the stent from slipping or sliding off the
balloon.
During prosecution before the Office, claims are to be given their
broadest reasonable interpretation consistent with the Specification as it
would be interpreted by one of ordinary skill in the art. In re American
Academy Of Science Tech Center, 367 F.3d 1359, 1364 (Fed. Cir. 2004).
“An essential purpose of patent examination is to fashion claims that are
precise, clear, correct, and unambiguous. Only in this way can uncertainties
of claim scope be removed, as much as possible, during the administrative
process.” In re Zletz, 893 F.2d 319, 322 (Fed. Cir. 1989). Moreover, it is
during prosecution that applicants have “the opportunity to amend the claims
to obtain more precise claim coverage.” American Academy, 367 F.3d at
1364.
Claim 41 recites “releasably retaining said stent to said inflatable
portion by depressions formed therein.” There is nothing in the claim
language that excludes forming of depressions by crimping as taught by
Wiktor, such that the stent is also frictionally retained on the balloon.
Stated differently, the stent of Wiktor is releasably retained in the
depressions formed by crimping the loops of the stent, as well as the friction
provided by the gripping of the stent provided by the crimping. We
therefore affirm the anticipation rejection of claim 41, and claim 42 falls
with that claim.

Appeal 2011-012405
Application 10/020,592

5
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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