Ex Parte Osborne et al

Board of Patent Appeals and Interferences

Oct 14, 2009

10642513 (B.P.A.I. Oct. 14, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS A. OSBORNE and JASON A. MEAD
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Appeal 2009-002753
Application 10/642,513
Technology Center 3700
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Decided: October 14, 2009
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Before WILLIAM F. PATE, III, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Thomas A. Osborne et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 45, 46, 48-50, 53, 58, and 60-
62. Claims 47, 51, 52, 54-57, 59, 63, and 64 have been withdrawn and
claims 1-44 have been cancelled. We have jurisdiction over this appeal
under 35 U.S.C. § 6 (2002).

THE INVENTION
The Appellants’ invention relates to a stent with barbs 314 integral
with the stent wire 322, where the barbs are not attached to the stent wire
during manufacturing. Spec. 1, ¶ [0005]. That is, the barbs 314 are cut into
the stent wire 322 and the wire is bent into a suitable stent wire shape such
as to orient the barbs in a desired direction in relation to the longitudinal axis
of the final stent shape. Spec. 59, ¶ [0198]; Spec. 61, ¶¶ [0204] and [0205];
and figs. 85 and 86a.
Claim 45 is representative of the claimed invention and reads as
follows:
45. A barbed stent for deployment within the body of a
patient, comprising:

a wire having at least one integrally formed barb that has
not been attached to the wire during the manufacturing
process, configured to engage tissue adjacent the stent;

wherein the wire comprises at least one bend connecting
to at least two struts such that the at least one barb points
in a predetermined direction at an angle relative to a
longitudinal axis of the stent, wherein the at least one
barb is unbent with respect to the wire and is free of
weakening due to bending.

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THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Anderson US 5,800,526 Sep. 1, 1998

Appellants seek review of the Examiner’s rejection of claims 45, 46,
48-50, 53, 58, and 60-62 under 35 U.S.C. § 102(b) as anticipated by
Anderson.

THE ISSUE
Have Appellants shown that the Examiner erred in finding that the
barbs of Anderson are unbent with respect to the stent wire? The issue turns
on whether the barbs of Anderson are “necessarily” unbent with respect to
the stent wire.

SUMMARY OF DECISION
We REVERSE.

PRINCIPLES OF LAW
Anticipation
"A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference." Verdegaal Bros, Inc.. v. Union Oil Co. of Cal., 814 F.2d 628,
631 (Fed. Cir. 1987).
Inherency
Under principles of inherency, when a reference is silent about an
asserted inherent characteristic, it must be clear that the missing descriptive
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matter is necessarily present in the thing described in the reference, and that
it would be so recognized by persons of ordinary skill. Continental Can Co.
v. Monsanto Co., 948 F.2d 1264, 1268 (Fed. Cir. 1991).

OPINION
Appellants argue that Anderson fails to teach a stent having unbent
integral barbs. App. Br. 12. See also Reply Br. 2, 3. In response, the
Examiner notes that the stent and barbs of Anderson:
. . . are machined from a flat sheet of metal (by
laser cutting or chemical etching) such that the
barbs will be directed outwardly upon expansion
of the stent due to removed material in the area of
the barbs (see col. 9 lines 16-26 and 42-50).
Ans. 3. Further, the Examiner points to Figures 4-7 of Anderson to show
that because both wire bends 18 and barbs 20 face outwardly, the barbs 20
are not bent with respect to the wire. Id. In other words, the Examiner
appears to take the position that because material has been removed in areas
of the barbs 20, during expansion of stent 10 the wire 18 will bend at these
regions such that barbs 20 will be oriented outwardly but will not bend with
respect to the stent wire. We disagree with the Examiner’s position for the
following reasons.
It is our finding that Anderson teaches a stent 10 having a plurality of
integral formed barbs 20. Anderson, col. 6, ll. 41-42 and 61-66; and fig. 1.
Anderson further teaches using “step etching” in the area of barbs 20 so as
to,
. . . remove portions of material so that the barbs
will bend outwardly when the stent is expanded.
In other words, step etching allows for the removal
of material in highly selective areas so that upon
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radial expansion of the stent, areas having less
material will have a tendency to bend or distort,
such as with the barbs bending outwardly to
engage the aortic valve.

Anderson, col. 9, ll. 16-26 (emphasis added).
Hence, Anderson specifically teaches that the barbs 20 bend outwardly when
the stent 10 expands radially. However, having the barbs bent outwardly
does not mean that the barbs themselves are bent with respect to the wire 18,
as Appellants suggest. Likewise, it does not mean that it is the wire 18 that
undergoes bending and not the barbs 20, as the Examiner proposes. Hence,
in a first instance, we find that both situations are equally probable.
However, inherency may not be established by probabilities or possibilities.
In re Oelrich, 666 F.2d 578, 581 (CCPA 1981) (quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214 (CCPA 1939). In this case, Anderson also
teaches uniform radial expansion of the stent 10 without substantial out-of-
plane twisting. Anderson, col. 8, ll. 17-19. Accordingly, if the wire 18
undergoes bending to orient the barbs 20 outwardly, as the Examiner
suggests, then the stent 10 will also likely undergo out-of-plane twisting,
which is in contrast to Anderson’s specific teachings. As such, we agree
with Appellants that the barbs 20 of Anderson are not necessarily unbent
with respect to the stent wire. See Reply Br. 3.
In conclusion, we find that the Examiner has not provided sufficient
evidence to support the finding that the barbs 20 of Anderson are necessarily
unbent with respect to the stent wire. Accordingly, the rejection of claims
45, 46, 48-50, 53, 58, and 60-62 under 35 U.S.C. § 102(b) as anticipated by
Anderson cannot be sustained.
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CONCLUSION
Appellants have shown that the Examiner erred in determining that
the integral barbs of Anderson are unbent with respect to the stent wire.

DECISION
The Examiner’s decision to reject claims 45, 46, 48-50, 53, 58, and
60-62 under 35 U.S.C. § 102(b) as anticipated by Anderson is reversed.

REVERSED

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LV

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