Ex Parte Hanson et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11122397 (B.P.A.I. Jan. 17, 2012)

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.
11/122,397 05/05/2005 Brian J. Hanson 1001.1902101 6817
11050 7590 01/18/2012
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
COLELLO, ERIN L
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
01/18/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRIAN J. HANSON, WADE M. JOHNSON, and
KENNETH M. MERDAN
____________

Appeal 2010-008785
Application 11/122,397
Technology Center 3700
____________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
STEPHEN WALSH, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL

This appeal under 35 U.S.C. § 134 involves claims 38-42 (App. Br.
3).
1
We have jurisdiction under 35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a tubular structure. Claim 38 is
representative and is reproduced in the “CLAIMS APPENDIX” of
Appellants‟ Brief (App. Br. 15).

1
Pending claims 1-28, 30-37, and 43-50 stand withdrawn from
consideration (App. Br. 3).
Appeal 2010-008785
Application 11/122,397

2
Claims 38-42 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Osypka.
2

We affirm.
ISSUE
Does the preponderance of evidence on this record support the
Examiner‟s finding that Osypka teaches the claimed invention?
FACTUAL FINDINGS (FF)
FF 1. We adopt the Examiner‟s findings concerning the scope and content
of the prior art (Ans. 3-4) and provide the following factual findings for
emphasis.
FF 2. Osypka teaches an implantable stent as illustrated in figures 7 and 8,
reproduced below:

“FIG. 7 is a view of the application and arrangement of a stent . . . in the
region of a vascular constriction during or at the end of a first dilation”
(Osypka 2: ¶ [0026]; id. at ¶ [0027]; see Ans. 3-4). “FIG. 8 is a view

2
Osypka, US 2002/0128706 A1, issued Sept. 12, 2002.
Appeal 2010-008785
Application 11/122,397

3
corresponding to FIG. 7” wherein “the distance of the edges of the break is
enlarged on the longitudinal side” (Osypka 2: ¶ [0027]).
FF 3. Osypka‟s “stent 1 has a continuous opening or is broken open along
a longitudinal side . . ., which is especially recognizable in FIG. 8” (Osypka
3: ¶ [0036]; see Ans. 3-4).
FF 4. “On the edges 5 extending axially on both sides of the break 4, one
will recognize in any given case recesses, punchings or eyelets 6 which are
constructed as circular holes or openings and are designated as „punchings
6‟” (Osypka 3: ¶ [0037]; see Ans. 3-4).
FF 5. The Examiner‟s annotated view of Osypka‟s FIG. 8 is reproduced
below:

The Examiner‟s annotated view of Osypka‟s FIG. 8 identifies the features of
Osypka‟s stent that correspond with the stent set forth in Appellants‟ claim
38 (Ans. 4).
Appeal 2010-008785
Application 11/122,397

4
ANALYSIS
Appellants contend that because Osypka‟s connectors 5 “are
interposed between the mesh portion and the opening[,] which is designated
by reference numeral 4,” “the edge of the mesh portion of the stent is
everywhere distanced from the opening (4) by the width of . . . [each
connector 5] and thus is incapable of being defined by the relatively distant
opening as recited in pending claim 38” (App. Br. 5; see also Reply Br. 2-3
and 4). We are not persuaded.
The question is not whether Osypka uses the same words as
Appellants or labels the elements of the tubular structure in the same manner
as Appellants. Instead, the question is whether Osypka‟s tubular structure is
the same as that set forth in Appellants‟ claim 38. In the absence of
connectors 5, Osypka‟s opening defines first and second wall edges that
extend from the first end to the second end of the tubular structure (FF 1-3
and 5). While we agree with Appellants contention that Osypka‟s
connectors 5 have some amount of width, Appellants have not distinguished
this feature of Osypka from the requirement in claim 38 that at least one
connector extends into the opening from both the first and second edges (see
Claim 38; Cf. FF 1-3 and 5). Stated differently, absent evidence to the
contrary, Osypka‟s connectors have the same width as the connectors set
forth in Appellants‟ claim 38. Therefore, the opening between the first and
second wall edges of Osypka‟s tubular structure is the same as opening set
forth in Appellants‟ claim 38.
Appellants contend that the undulations along the edge of Osypka‟s
connectors 5 “are a common feature of such edges which are found in
withdrawn original claim 4 . . . and should not be interpreted as „connectors‟
Appeal 2010-008785
Application 11/122,397

5
extending from the edge defined by the opening since they form the
longitudinal edge of the opening and do not extend materially therefrom”
(App. Br. 5-6). Appellants provide no persuasive argument or evidence to
suggest that the subject matter of original claim 4 was restricted from the
scope of claim 38. Further, no limitation in Appellants‟ claim 38 precludes
the connectors from forming a longitudinal edge along the opening defined
as the space between the first and second wall edges (see FF 5).
Accordingly, we find no error in the Examiner‟s finding that “the claim
language does not require that a portion of the edges have to be in contact
with the opening” (Ans. 5; Reply Br. 3).
CONCLUSION OF LAW
The preponderance of evidence on this record supports the
Examiner‟s finding that Osypka teaches the claimed invention. The
rejection of claim 38 under 35 U.S.C. § 102(b) as being anticipated by
Osypka is affirmed. Because they are not separately argued claims 39-42
fall together with claim 38. 37 C.F.R. § 41.37(c)(1)(vii).
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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