Ex Parte Brown

Board of Patent Appeals and Interferences

Jun 22, 2009

10960265 (B.P.A.I. Jun. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRIAN J. BROWN
__________

Appeal 2009-001829
Application 10/960,265
Technology Center 3700
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Decided:1 June 22, 2009
__________

Before DONALD E. ADAMS, ERIC GRIMES, and MELANIE L.
McCOLLUM, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims 1-26, all of
the pending claims, which are directed to a stent. The Examiner has rejected

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
Appeal 2009-001829
Application 10/960,265

the claims as anticipated. We have jurisdiction under 35 U.S.C. § 6(b). We
affirm-in-part.
STATEMENT OF THE CASE
The Specification discloses a helical stent that comprises “a helically
wound ribbon of material” (Spec. 1: 31-32). Figure 4 of the Specification is
shown below:

Figure 4 shows “a stent comprising a helically wound ribbon in an expanded
state” (id. at 2: 30-31). The Specification discloses that the ribbon “may
include a first rail or edge member 20 and a second rail or edge member 30.
… At least one and desirably a plurality of connector struts 40 may connect
the first rail 20 to the second rail 30” (id. at 4: 5-11). The Specification also
discloses that “the ribbon 12 may have a width dimension ‘w’ or spacing
between the first rail 20 and the second rail 30” (id. at 6: 31-32) and that the
ribbon may also have a “longitudinal width wl [which] is the distance
between a first rail 20 and a second rail 30, as measured in a direction
parallel to the stent longitudinal axis 60” (id. at 5: 31 - 6: 1). The
Specification also discloses that “[d]esirably, the width w of a ribbon 12 in
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Application 10/960,265

an expanded state is greater than the width w of the ribbon 12 in an
unexpanded state. Upon expansion of a ribbon 12, the shape of a connector
strut 40 may change and the length of a connector strut 40 along its
connector strut axis 50 may increase” (id. at 5: 12-15).
Claim 1 is representative and reads as follows:
Claim 1: A stent comprising a helically wound ribbon of material, the
stent having a longitudinal axis extending therethrough,
the ribbon having a width dimension, wherein the stent is constructed
and arranged such that the width dimension of the ribbon in an expanded
state of the stent exceeds the width dimension of the ribbon in an
unexpanded state of the stent.
ANTICIPATION
Issue
The Examiner has rejected claims 1-26 under 35 U.S.C. § 102(b) as
being anticipated by Barclay.2 The claims have been argued in four groups:
claims 2-9, 11, and 12 stand or fall with claim 1; claim 10 stands or falls
alone; claims 14-18 stand or fall with claim 13; and claims 20-26 stand or
fall with claim 19. 37 C.F.R. § 41.37(c)(1)(vii).
The Examiner finds that the “stent blank of [Barclay’s] figure 1B …
will have a reduced width in an unexpanded configuration and an increased
width in the expanded configuration … [b]y pulling on opposite corners of
the stent blank” to form a stent shape that may be wound, delivered and
released, such that the stent will expand and increase in width upon release
(Office Action mailed Feb. 1, 2007, at 7-8).

2 Barclay et al., US 2002/0082682 A1, Jun. 27, 2002.
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Appellant contends that the Examiner erred in finding that Barclay
discloses a ribbon stent “constructed and arranged such that the width
dimension of the ribbon in an expanded state of the stent exceeds the width
dimension of the ribbon in an unexpanded state of the stent” (Appeal Br. 7-
9).
The main issue presented is: Does the evidence of record support the
Examiner’s finding that Barclay discloses a ribbon stent “constructed and
arranged such that the width dimension of the ribbon in an expanded state of
the stent exceeds the width dimension of the ribbon in an unexpanded state
of the stent?”
Findings of Fact
1. Barclay discloses “devices and methods for the delivery of a
biologically active agent by a coiled prosthesis, typically a covered coiled
stent” (Barclay ¶ 0002).
2. Barclay discloses that the
prosthesis comprises a coiled body having … radially-
extending openings, the coiled body being movable from a
radially-contracted state to a radially-expanded state. A
material extends along a coiled path along the entire coiled
body. A dispensable, biologically active agent is associated
with at least one of the coiled body and material.
(Id. at ¶ 0055.)
3. Figures 1B and 1E of Barclay are shown below:
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Figure 1B is said to show a design of a stent blank (id. at ¶ 0064) and
Figure 1E is said to show a coiled stent made from the stent blank of Figure
1B (id. at ¶ 0065).
4. Barclay discloses that the stent body includes “side edge or rail
elements 110 connected by connector or rung elements 112 to define
openings 113” (id. at ¶ 0089).
5. Barclay discloses that
[c]oil-type stents can be wound about the catheter shaft in
torqued compression for deployment. The coil-type stent can
be maintained in this torqued compression condition by
securing the ends of the coil-type stent in position on a catheter
shaft. The ends are released by, for example, pulling on wires
once at the target site.
(Id. at ¶ 0009.)
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6. Barclay discloses that stents are typically made from either a
malleable material that is expanded by a balloon catheter at the target site or
a self-expanding structure made from, e.g., Nitinol or stainless steel (id. at ¶
0005).
7. The Specification’s Figure 8 is shown below:

The figure shows “another embodiment of a ribbon 12 which may be
wound to form a stent” (Spec. 7: 32 to 8: 1).
8. The Specification’s Figure 9 is shown below:

The figure shows “the ribbon of Figure 8 in an expanded
configuration. . . . The connector struts 40 desirably extend from a rail 20, 30
at a greater angle in the expanded state than in the unexpanded state, up to a
maxiumum of 90°” (id. at 8: 13-17).
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9. The Specification discloses that “[i]n some embodiments, a first
rail 20 and a second rail 30 may be slidably engaged with one another when
the ribbon 12 is wound helically” (Spec. 9: 7-9).
10. The Specification does not define the term “slidably engaged.”
11. The Specification discloses that “Figures 12-14 show various
embodiments of mechanisms for engagement between the first rail 20 and
the second rail 30” (id. at 9: 9-11). Figures 12-14 show that rails 20 and 30
are physically connected.
12. Figure 12 of the Specification is shown below:

Figure 12 shows the first rail and the second rail interacting via a
tongue and groove mechanism.
Principles of Law
In response to the PTO’s asserted prima facie case the applicant
may argue that the inference of lack of novelty was not properly
drawn, for example if the PTO did not correctly apply or
understand the subject matter of the reference, or if the PTO
drew unwarranted conclusions therefrom. However, when the
PTO shows sound basis for believing that the products of the
applicant and the prior art are the same, the applicant has the
burden of showing that they are not.
In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990).
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[T]he PTO applies to the verbiage of the proposed claims the
broadest reasonable meaning of the words in their ordinary
usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of
definitions or otherwise that may be afforded by the written
description contained in the applicant’s specification.
In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).
Analysis
Claim 1 is directed to a stent comprising a helically wound ribbon of
material, and constructed and arranged so that the stent ribbon is wider in the
expanded state than it is in the unexpanded state.
Barclay discloses (Figure 1B) a helical stent ribbon having rails and
struts. Barclay does not disclose the material used to make the stent
framework but discloses that stents are typically made of either a malleable
material or a resilient material such as Nitinol or stainless steel. Barclay also
discloses that the stent can be moved from a radially contracted state to a
radially expanded state, and that coil-type stents (i.e., helical stents) can be
wound about a catheter shaft in torqued compression for deployment.
The Examiner reasons that the
Barclay stent blank of figure 1B is capable of being
manipulated so that the device will have a reduced width in an
unexpanded configuration and an increased width in the
expanded configuration. The Examiner contends that this may
be achieved in a similar manner as that shown in figures 8 and 9
of the Applicant’s disclosure. By pulling on opposite corners of
the stent blank, for example the upper-left and lower-right
corners, the stent will deform into a shape similar to that of
figure 8. The stent may then be wound into a helix in this state
and delivered. Upon release, the stent will both expand and
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increase in width direction because the blank will return to the
shape of figure 1B.
(Office action mailed Feb. 1, 2007, pages 7-8.)
We agree with the Examiner’s reasoning. The stent shown in
Barclay’s Fig. 1E is capable of assuming a state in which the corners shown
at the left- and right-hand sides in that figure are moved away from each
other; that is, a “stretched,” or radially contracted state. In a stretched,
radially contracted state, the openings of Barclay’s stent would not have the
basically rectangular shape shown in Figure 1B but would be stretched into a
longer, narrower quadrilateral shape. Therefore, we agree with the
Examiner that, just as with the stents shown in the Specification’s Figures 8
and 9, when Barclay’s stent is in the state that Barclay describes as “radially
contracted” it is reasonable to expect that it would have a ribbon width that
is less than the width of the ribbon in the stent’s released, expanded state.
For the same reason, we agree with the Examiner that when Barclay’s
stent changes from a radially contracted state to the radially expanded state
shown in Figure 1E, it is reasonable to expect that the width of each turn
increase, as recited in claim 13,3 because the width of each turn depends on
the width of the ribbon.
Appellant contends that “Barclay does not discuss a width dimension
of the ‘stent blank’ changing between [the] unexpanded and expanded

3 Claim 13 reads: “A stent comprising a substantially helically wound
ribbon, the ribbon comprising a plurality of turns about a central longitudinal
axis of the stent, each turn of the ribbon having a width, wherein the width
of each turn increases upon expansion of the stent.”
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states” and that any finding of anticipation that relies on an inherent
disclosure of this claim limitation is improper (Appeal Br. 7).
This argument is not persuasive. Although Barclay does not expressly
disclose changing its stent blank between expanded and unexpanded states,
Barclay’s product reasonably appears capable of assuming those states.
Based on the structure of Barclay’s product, it is also reasonable to conclude
that it would have the property that the “width dimension of the ribbon in an
expanded state of the stent [would] exceed[ ] the width dimension of the
ribbon in an unexpanded state of the stent.” “[W]hen the PTO shows sound
basis for believing that the products of the applicant and the prior art are the
same, the applicant has the burden of showing that they are not. Spada, 911
F.2d at 708. Appellant has provided no evidence showing that Barclay’s
ribbon does not possess the disputed property. Thus, the rejection of claim 1
as being anticipated by Barclay is affirmed.
With regard to claim 10,4 the Examiner reasons that “Figure 1E shows
that upon helical winding, rails on opposite sides of the stent do engage. As
shown in figures 7A-7C, the rails will slide against each other during
expansion” (Answer 10).
Appellant contends that Barclay does not disclose rail members that
are “slidably engaged” (Appeal Br. 10). Appellant contends that “[a]lthough
the outermost rails of the Barclay stent blank are shown adjacent to one
another in Figure 1E, … [a] person of ordinary skill in the art would

4 Claim 10 reads: “[The stent of claim 1, wherein the ribbon comprises a
first rail and a second rail, the first rail connected to the second rail by a
plurality of connector struts], wherein the first rail is slidably engaged with
the second rail.”
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recognize that the limitation ‘slidably engaged’ requires more than merely
being located next to one another” (Reply Br. 7). Appellant contends that in
“the mechanical context of this art, the term ‘engaged’ generally means
‘interlocked’” (id.).
Appellant’s arguments are persuasive. In accord with In re Morris,
claim terms are given their broadest reasonable interpretation in view of the
Specification. The Specification does not expressly define the term
“slidably engaged” but Appellant has provided a dictionary definition to
support his position that “engaged” in the mechanical context means
“interlocked.” The Examiner has not provided evidence that those skilled in
the art would have understood “engaged” to mean something else. In
addition, all of the embodiments of slidable engagement in the Specification
show physical connection between the rails. Thus, given the definition of
“engage” in this context and given that all of the embodiments of slidable
engagement show physical connection, we conclude that the broadest
reasonable interpretation for the term “slidably engaged” requires a physical
connection capable of sliding. The Examiner has not adequately shown that
such a structure is disclosed by Barclay. Thus, the rejection of claim 10 as
being anticipated by Barclay is reversed.
With regard to claim 19,5 Appellant argues that “Barclay does not
discloses or suggest a stent wherein upon expansion of the stent, the width

5 Claim 19 reads: “An unexpanded coil stent comprising: a strip helically
wound about a longitudinal axis of the stent, the strip having a width
dimension; the strip having a predetermined number of turns about the
longitudinal axis, wherein upon expansion of the stent, the number of turns
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dimension of the ‘stent blank’ increases. . . . Further, the Examiner has not
asserted that the limitations of claim 19 are inherently disclosed by any stent
structure that was originally taught by Barclay.” (Appeal Br. 11.)
Appellant’s arguments are persuasive. Claim 19 is directed to “[a]n
unexpanded coil stent” configured so that the number of turns decreases and
the width of the strip increases upon expansion. That is, claim 19 specifies
that the claimed stent is in an unexpanded state. While we agree with the
Examiner that Barclay’s stents are capable of being put in an unexpanded
(radially contracted) state, the Examiner has pointed to no disclosure in
Barclay of a stent that is actually in such a state. The Examiner therefore
has not shown that Barclay discloses the stent defined by claim 19, or claims
20-26, which depend on claim 19.
CONCLUSIONS OF LAW
The evidence of record supports the Examiner’s finding that Barclay
discloses a ribbon stent “constructed and arranged such that the width
dimension of the ribbon in an expanded state of the stent exceeds the width
dimension of the ribbon in an unexpanded state of the stent.”
SUMMARY
We affirm the rejection of claims 1-9 and 11-18 under 35 U.S.C. §
102(b) as being anticipated by Barclay. However, we reverse the rejection
of claim 10 and 19-26.

of the strip about the longitudinal axis decreases and the width dimension of
the strip increases.”
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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-IN-PART

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