Ex Parte Brown

Patent Trial and Appeal Board

Mar 29, 2016

13295744 (P.T.A.B. Mar. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/295,744 11/14/2011
121974 7590 03/31/2016
KACVINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
FIRST NAMED INVENTOR
Brian J. Brown
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
8150BSC0096C5 1792
EXAMINER
DUKERT, BRIAN AINSLEY
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
03/31/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
kddocketing@cpaglobal.com
bbonneville@kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN J. BROWN
Appeal2014-001683
Application 13/295,744
Technology Center 3700
Before STEFAN STAICOVICI, EDWARD A. BROWN, and
GEORGE R. HOSKINS, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian J. Brown ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting, under 35 U.S.C. § 102(a), (e), claims 2-
20 as anticipated by Fischell (US 5,697,971, iss. Dec. 16, 1997). The Board
has jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE.
1 The Appeal Brief identifies Boston Scientific Scimed, Inc. as the real party
in interest. Appeal Br. 2.
Appeal2014-001683
Application 13/295,744
CLAIMED SUBJECT MATTER
Claims 2, 9, and 16 are independent. Claim 2 illustrates the subject
matter on appeal (with emphasis added):
2. An expandable stent, comprising:
a plurality of adjacent closed cylindrical bands, the closed
cylindrical bands being contiguous patterns forming cylinders
around the stent longitudinal axis, connected to one another by a
plurality of interconnecting constituents of the stent, the
interconnecting constituents joining two or more other
constituents of the stent, wherein the other constituents comprise
the adjacent closed cylindrical bands;
each closed cylindrical band including a plurality of first
circumferential segments, each first circumferential segment
being a contiguous element coursing in a circumferential manner
about the stent and spanning between two interconnecting
constituents and including five linear segments;
each closed cylindrical band including a plurality of
second circumferential segments, each second circumferential
segment being a contiguous element coursing in a
circumferential manner about the stent and spanning between
two interconnecting constituents and including three linear
segments;
the first and second circumferential segments alternating
with one another in each closed cylindrical band;
wherein the first circumferential segments of adjacent
closed cylindrical bands are offset from each other to form a first
continuous substantially repeating pattern coursing along the
stent in a helical manner and consisting of a plurality of the first
circumferential segments alternating with a plurality of the
interconnecting constituents; and
wherein the second circumferential segments of adjacent
closed cylindrical bands are offset from each other to form a
second continuous substantially repeating pattern coursing along
the stent in a helical manner and including a plurality of second
circumferential segments alternating with a plurality of the
interconnecting constituents.
2
Appeal2014-001683
Application 13/295,744
Claims 2--8
ANALYSIS
Appellant argues the Examiner errs in finding Fischell discloses, as
recited in claim 2, "a first continuous substantially repeating pattern coursing
along the stent in a helical manner and consisting of a plurality of the first
circumferential segments alternating with a plurality of the interconnecting
constituents" (emphases added). Appeal Br. 7-9; Reply Br. 2-3. For the
following reasons, we agree.
The Examiner annotates Fischell Figure 2 in support of the
anticipation rejection, as reproduced below:
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Final Act. 3-5. These annotations to Fischell Figure 2 identify where the
Examiner finds disclosure corresponding to the claimed "first
circumferential segments" (each in grey, and including five linear segments),
the claimed "interconnecting constituents," and the claimed "first continuous
3
Appeal2014-001683
Application 13/295,744
substantially repeating pattern" (following a dotted line axis). Id. The
Examiner reasonably interprets the term "pattern" to mean "a recurring or
repeating design." Ans. 3. According to the Examiner, the annotations
show a "continuous substantially repeating pattern" as claimed, even though
adjacent first circumferential segments in the identified pattern are not
connected directly to each other by an interconnecting constituent. Id. The
Examiner determines the identified pattern "consists only of first
circumferential segments (gray-shade) and the interconnecting constituents,"
and does not include any second circumferential segments (each in black,
and including three linear segments), "in the same manner the instant
application does not include the second circumferential segments." Id. at 4.
We determine the Examiner errs by failing to give proper weight to
the claim requirement for a "continuous" pattern, "consisting of' first
circumferential elements alternating with interconnecting constituents. We
appreciate that the Examiner's identification of the "1st Continuous
Repeating Pattern" in Fischell Figure 2 is a repeating set of first
circumferential segments (specifically, three such segments), each of which
is connected directly to at least one interconnecting constituent, which
thereby forms a pattern.
However, that pattern is not continuous. Dictionary definitions of
"continuous" include "going on or extending without interruption or break;
unbroken; connected." Webster's New World Dictionary of American
English (3rd College Ed.,© 1988, Ed. Victoria Neufeldt). Such definitions
are consistent with Appellant's application, in which Figure 9 shows a
continuous pattern (i.e., an unbroken connection) consisting of first
circumferential segments and interconnecting constituents. See Preliminary
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Appeal2014-001683
Application 13/295,744
Amendment 23-24 (filed Nov. 14, 2011). In order for the Examiner's
identified pattern in Fischell to be continuous as claimed, the pattern would
have to include at least one second circumferential segment, so the pattern
would form an unbroken connection. Including the second circumferential
segments in the pattern, though, would violate the claim requirement for the
pattern to be "consisting of' first circumferential segments and
interconnecting constituents. 2 The three different first circumferential
segments and accompanying interconnecting elements identified by the
Examiner in Fischell Figure 2 are not continuous.
For the foregoing reasons, we do not sustain the rejection of
independent claim 2, or of claims 3-8 depending therefrom, as anticipated
by Fischell.
Claims 9-15
Appellant argues the Examiner errs in finding Fischell discloses, as
recited in claim 9, "a second continuous substantially repeating pattern
coursing along the stent in a helical manner and consisting of a plurality of
the second circumferential segments alternating with a plurality of the
interconnecting constituents" (emphases added). Appeal Br. 9-10. The
Examiner's position with regard to why Fischell discloses the claimed
2 The phrase "'[c]onsisting of' is a term of patent convention meaning that
the claimed invention contains only what is expressly set forth in the claim."
Norian Corp. v. Stryker Corp., 363 F.3d 1321, 1331 (Fed. Cir. 2004) (citing
Vehicular Techs. Corp. v. Titan Wheel Int'!, Inc., 212 F.3d 1377, 1382-83
(Fed. Cir. 2000)). Where, as here, the phrase appears in a clause of the body
of the claim, rather than immediately following the preamble, it limits only
the element set forth in that clause. Mannesmann Demag Corp. v.
Engineered Metal Prods. Co., 793 F.2d 1279, 1282 (Fed. Cir. 1986).
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Appeal2014-001683
Application 13/295,744
second pattern is substantially the same as for the first pattern, which we
have discussed above, except that it is applied to the second circumferential
segments rather than the first circumferential segments. See Final Act. 3-5;
Ans. 4--5. Thus, for substantially the same reasons provided above, we do
not sustain the rejection of independent claim 9, or of claims 10-15
depending therefrom, as anticipated by Fischell.
Claims 16--20
Appellant argues the Examiner errs in finding Fischell discloses, as
recited in claim 16, "a first continuous substantially repeating pattern
coursing along the stent in a helical manner and consisting of a plurality of
the first circumferential segments alternating with a plurality of the
interconnecting constituents" (emphases added). Appeal Br. 11. For the
reasons provided above in connection with an identical limitation in claim 1,
we do not sustain the rejection of independent claim 16, or of claims 17-20
depending therefrom, as anticipated by Fischell.
DECISION
The Examiner's decision to reject claims 2-20 as anticipated by
Fischell is reversed.
REVERSED
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