Ex Parte Mackiewicz et al

Board of Patent Appeals and Interferences

May 24, 2012

10661361 (B.P.A.I. May. 24, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte DAVID A. MACKIEWICZ,
KEIF FITZGERALD, and BORIS ANUKHIN
__________

Appeal 2011-002850
Application 10/661,361
Technology Center 3700
__________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1-4, 6-15, 17, 18, 21, 32, and 42-52. We
have jurisdiction under 35 U.S.C. § 6(b).
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STATEMENT OF THE CASE
The Specification teaches that the radiopacity of stents “can be
improved by using radiopaque markers which can be attached to the struts
forming the stent” (Spec. 3).
Figures 2 and 3 of the disclosure are reproduced below:

Figure 2 is an elevational view of a radiopaque marker attached to a marker
holder as taught by the Specification, and Figure 3 shows the shape of the
radiopaque marker and the marker holder (id. at 6). As shown in the figures,
the marker holder 22 includes a pair of fingers 26 connected at a notched
region 28, wherein the pair of projecting fingers 26 creates a V-shaped
opening 30 (id. at 9). The Specification teaches that “the mounting region of
the radiopaque marker 20 has a substantially linearly extending contact edge
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(on both sides of the marker) which comes in contact with the substantially
linearly extending contact edge formed on each projecting finger 26” (id. as
amended February 13, 2009).
Claim 1 is representative of the claims on appeal, and reads as
follows:
1. An implantable medical device having enhanced radiopacity,
comprising:
a structural body formed from a biocompatible material having a
certain level of radiopacity, the structural body including at least one marker
holder integrally formed therein; and
a radiopaque marker made from a material having a level of
radiopacity greater than the level of radiopacity of the biocompatible
material from which the structural body is formed, the radiopaque marker
being attachable within the marker holder,
wherein the marker holder includes a pair of longitudinally projecting
fingers which define a substantially V-shaped opening, wherein each
projecting finger has a substantially linearly extending contact edge formed
thereon and the radiopaque marker includes a substantially V-shaped
mounting region which fits within the V-shaped opening defined by the pair
of longitudinally projecting fingers, the radiopaque marker having a pair of
substantially linearly extending contact edges formed thereon each of which
contacts a contact edge of the projecting fingers.

The following grounds of rejection are before us for review:
1. Claims 1-4, 6, 7, 32, 42, 51, and 52 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Frantzen
1

and Ehrfeld.
2
As Appellants do not argue the claims separately, we
focus our analysis on claim 1, and claims 2-4, 6, 7, 32, 42, 51, and 52
stand or fall with that claim.

1
Frantzen, US 5,741,327, issued Apr. 21, 1998.
2
Ehrfeld et al., DE 19728337 A1, issued Jul. 1, 1999.
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2. Claims 8-15, 17, 18, 21, and 43-50 stand rejected under 35 U.S.C.
§ 103(a) as being rendered obvious by the combination of Frantzen
and Ehrfeld, as further combined with Duerig.
3

We affirm, but as our reasoning differs from that of the Examiner, we
designate our affirmance as a new ground of rejection.

ANALYSIS
The Examiner finds that Frantzen teaches all of the limitation of claim
1, except for teaching the use of “projecting fingers [that] have a
substantially linearly extending contact edge and form[ ] a V-shaped
opening or that the radiopaque marker includes a V-shaped mounting region
with linearly extending contact edges” (Ans. 4).
To remedy that deficiency, the Examiner relies on Figures 4a and 4b
of Ehrfeld, reproduced below:

3
Duerig et al., US 6,503,271 B2, issued Jan. 7, 2003.
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Figure 4a shows an enlargement of the outer mesh of the stent of Ehrfeld
wherein the locking member 6 is formed, and Figure 4b shows the male
member 23a in the receiving member 22a (Ehrfeld,
4
p. 3.). The Examiner

4
All references to the disclosure of Ehrfeld are to the machine translation.
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finds that the locking member of Ehrfeld has projecting fingers 26 and 27
that define a V-shaped opening (Ans. 4). The Examiner further finds that
the prong 21 (which would correspond to the radiopaque marker) includes “a
substantially V-shaped mounting region which fits within the opening of the
projecting fingers (Fig. 4b)” (id.).
The Examiner concludes that it would have been obvious “to
incorporate the connecting technique of Ehrfeld into the stent of Frantzen for
the purpose of providing a more secure fit” (id. at 5).
Appellants argue that Ehrfeld is drawn to a locking mechanism for
locking struts forming the stent body into an expanded configuration, and
has nothing to do with attaching separate components to a stent, such as a
radiopaque marker (see App. Br. 9). Appellants assert that even if the
ordinary artisan were to combine Frantzen and Ehrfeld, one would arrive at a
stent that has the separately formed radiopaque markers having the
configuration as taught by Frantzen with the locking mechanism of Ehrfeld
being used to lock the stent into an expanded configuration (id. at 9-10).
Appellants’ arguments are not convincing. Frantzen deals with
connecting a radiopaque marker to a stent, and Ehrfeld also deals with a
connecting mechanism, albeit one for locking a stent into an expanded state.
Thus, we agree with the Examiner (Ans. 7) that it would have been obvious
to the ordinary artisan to look at art that deals with locking two components
together, such as the locking mechanism of Ehrfeld, in modifying a
connection of a radiopaque marker to a stent, such as that taught by
Frantzen.
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Appellants argue further that “[w]hile the Ehrfeld patent may disclose
the use of two projecting fingers, the rejected claims require each projecting
finger to have a substantially linearly extending contact edge formed
thereon” (App. Br. 10). Appellants assert that as seen in Fig. 4a of Ehrfeld,
the contact structure is not linearly extending, but is zigzag in shape, and
“cannot be reasonably considered to be substantially linear in shape” (id. at
10-11). Appellants note that the Examiner “has identified the notches 22a
and 24a formed on each individual projecting finger as the V-shaped
opening,” asserting that the “claims do not call for the V-shaped opening to
be formed on each individual projecting finger . . . . [but that] it is the
combination of the two spaced apart projecting fingers which define the V-
shaped opening” (id. at 11).
We have carefully considered Appellants’ arguments, but do not find
them convincing. Appellants admit that Ehrfeld discloses the use of two
projecting fingers, and we agree with the Examiner that those two fingers
form a substantially V-shaped opening. A portion of Figure 4a of Frantzen
is shown below.

As can be seen in the annotated figure, the fingers define an opening that is
substantially V-shaped.
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Claim 1 also requires that each projecting finger has a “substantially
linearly extending” contact edge formed thereon. Appellants assert that
limitation requires that the shape of the contact edge itself be essentially
linear, that is, essentially flat so as to define a line. That limitation, however,
is not required by claim 1. What is required is that the fingers have a
“substantially linearly extending” contact edge, which we interpret as
requiring that the edge extend linearly, but not that the shape of the edge
itself need be essentially flat. Stated differently, the term “linearly” as used
in the claim does not modify the shape of the contact edge itself, but
modifies how that edge extends. And as can be seen in the annotated figure
above, the contact edge does extend “substantially linearly” from the bottom
to the top of the “V.”
We thus affirm the rejection of claims 1-4, 6, 7, 32, 42, 51, and 52
under 35 U.S.C. § 103(a) as being rendered obvious by the combination of
Frantzen and Ehrfeld. As our reasoning differs from that of the Examiner,
we designate our affirmance as a new ground of rejection.
As to Rejection II, Appellants rely on the arguments made with
respect to Rejection I above (App. Br. 12). We thus also affirm the rejection
of claims 8-15, 17, 18, 21, and 43-50 under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Frantzen and Ehrfeld, as further
combined with Duerig, for the reasons set forth above.

This decision contains new grounds of rejection pursuant to 37
C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of
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rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that the Appellants, 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)(2007).

AFFIRMED; 37 C.F.R. § 41.50(b)

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