Ex Parte Shanley et al

Board of Patent Appeals and Interferences

Mar 15, 2012

10849324 (B.P.A.I. Mar. 15, 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.
10/849,324 05/19/2004 John F. Shanley CMI5001USCNT15 7020
100369 7590 03/15/2012
Dergosits & Noah LLP
Three Embarcadero Center, Suite 410
San Francisco, CA 94111
EXAMINER
BLANCO, JAVIER G
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
03/15/2012 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 JOHN F. SHANLEY, NEAL L. EIGLER, and
ELAZER R. EDELMAN
____________________

Appeal 2010-002504
Application 10/849,324
Technology Center 3700
____________________

Before: PHILLIP J. KAUFFMAN, WILLIAM V. SAINDON, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2010-002504
Application 10/849,324
2
STATEMENT OF CASE
Appellants seek review of the Examiner’s rejection of claims 40-46
under 35 U.S.C. § 102(b) as anticipated by Johnson (US 5,972,027; iss. Oct.
26, 1999); claims 40-46 and 50-53 under 35 U.S.C. § 102(e) as anticipated
by Dang (US 6,758,859 Bl; iss. Jul. 6, 2004); and claims 48 and 49 under
35 U.S.C. § 103(a) as unpatentable over Dang.1 We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

THE INVENTION
Appellants’ claimed invention “relates to tissue-supporting medical
devices, and more particularly to expandable, non-removable devices that
are implanted within a bodily lumen of a living animal or human to support
the organ and maintain patency, and that have improved spatial distribution
for delivery of a beneficial agent to the intervention site.” Spec. 1:13-17.
Independent claim 40, the sole independent claim on appeal, is illustrative
and reproduced below:
40. An expandable medical device comprising:
a plurality of substantially cylindrical tissue supporting
bodies which are each expandable from a cylinder having a first
diameter to a cylinder having a second diameter;
a plurality of flexible bridging members connecting the
substantially cylindrical tissue supporting bodies to form an
expandable device; and
a plurality of openings formed in the flexible bridging
members, the openings containing a beneficial agent for

1 Though not explicitly stated, apparently when the Examiner added the new
ground of rejection for claims 48 and 49 as unpatentable over Dang, the
Examiner intended to withdraw the rejection of claim 49 as anticipated by
Johnson and claims 48 and 49 as anticipated Dang because these claims
were omitted from statement of the rejection in the Answer. See Ans. 3,
Office Action dated Jan. 27, 2006; App. Br. 7, 11.
Appeal 2010-002504
Application 10/849,324
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delivery to tissue, wherein the plurality of openings in the
flexible bridging members are substantially undeformed during
flexing of the bridging members.

OPINION
Claim Construction
The flexible bridging members of claim 40 include a plurality of
openings that remain “substantially undeformed during flexing of the
bridging members.” The Specification describes that the device may include
a series of openings 32 at selected locations in the bridging elements 14.
Spec. 14:18-20; fig. 6.
Claim 40 recites that the opening remain substantially undeformed
“during” flexing of the bridging members, indicating that the openings must
remain substantially undeformed while flexing.
The Specification does not provide a definition for the claim term,
“substantially undeformed.” “Substantially” is often used to mean largely
but not wholly what is specified. See, e.g., York Prods., Inc. v. Cent. Tractor
Farm & Family Ctr., 99 F.3d 1568, 1572-73 (Fed. Cir. 1996); Amhil Enters.
Ltd. v. Wawa, Inc., 81 F.3d 1554, 1562 (Fed. Cir. 1996)). We find nothing
in the Specification inconsistent with this ordinary meaning.
The Specification does not provide a definition for the claim term,
“flexing.” A common definition of “flex” is “to bend.”2 This common

2 “Flex,” v. trans., Oxford English Dictionary (1989) available at
www.OED.com.
Appeal 2010-002504
Application 10/849,324
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definition is consistent with the Specification.3
Consequently, claim 40 calls for the openings in the flexible bridging
members to remain largely, but not wholly undeformed while the bridging
members flex (bend).

Claims 40-46 as anticipated by Johnson
The Examiner found that the length4 of Johnson’s flexible bridging
members (“short interconnecting struts”)5 remains substantially constant
during radial expansion6 of the device, so that the openings (pores 44 and
48) remain substantially undeformed as called for in claim 40. Ans. 3, 5.
Essentially, the Examiner found that radial expansion of Johnson’s device
does not produce sufficient tension to substantially deform the openings
(pores 44, 48) of the flexible bridging members (“short interconnecting
struts”). This finding is facially deficient because claim 40 does not call for
the openings in the flexible bridging members to remain substantially
undeformed during tensioning of the device. Rather, claim 40 calls for the

3 The Specification describes that “[t]he bridging elements 14 allow the
tissue supporting device to bend axially when passing through the tortuous
path of the vasculature to the deployment site and allow the device to bend
when necessary to match the curvature of a lumen to be supported.” Spec.
12:5-8; App. Br. 3 (explaining that the bridging members provide for axial
flexibility of the device during delivery of the device through a tortuous
body lumen). Thus, axial bending of the stent is one example of how the
bridging elements flex (bend).
4 The Examiner reasoned that because Johnson’s “short interconnecting
struts” are straight and shorter than the interconnecting members, the struts
do not lengthen during radial expansion of the device. Ans. 3.
5 The “short interconnecting struts” of Johnson’s stent are referred to as
“interconnections 24” in the embodiment shown in stent 20 of Figure 2,
which is similar to stent 40 of Figure 5.
6 Presumably, “radial expansion” refers to expansion from a first to a second
diameter as called for in claim 40.
Appeal 2010-002504
Application 10/849,324
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openings of the bridging members to remain substantially undeformed
during flexing (bending).
Johnson does not explicitly disclose that the openings (pores 44, 48)
of the flexible bridging members (“short interconnecting struts”) remain
substantially undeformed during flexing (bending) of the flexible bridging
members. Johnson, passim. Johnson’s stent may be comprised of a material
having memory characteristics that distorts when acted upon by external
forces, and returns to a preformed configuration after release of external
forces. Col. 2, ll. 4-10. This suggests that Johnson’s flexible bridging
members would distort during flexing (bending), causing pores 44, 48
thereon to deform.
We therefore cannot conclude by a preponderance of the evidence that
the openings (pores 44, 48) of Johnson’s flexible bridging members (the
“short interconnecting struts”) remain largely, but not wholly undeformed
during flexing (bending) of the bridging members as called for in claim 40.
Consequently, we must agree with Appellants that Johnson does not disclose
openings as called for in independent claim 40. App. Br. 11-12. As such,
we cannot sustain the rejection of independent claim 40 and its dependent
claims 41-46 as anticipated by Johnson.

Claims 40-46 and 50-53 as anticipated by Dang
The Examiner found that Dang discloses an expandable medical
device (stent 10) that includes a plurality of flexible bridging members
(interconnecting elements 24) having a plurality of openings (depots 30) that
do not substantially deform during expansion of the expandable medical
device. Ans. 3-4, 6. Similar to our discussion above regarding anticipation
by Johnson, this rejection is also facially deficient because the Examiner
Appeal 2010-002504
Application 10/849,324
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analyzed the effect of tension, not of flexing (bending) as called for in claim
40.
Dang does not explicitly disclose that openings (depots 30) of the
flexible bridging members (interconnecting elements 24) remain
substantially undeformed during flexing (bending) of the flexible bridging
member. Dang, passim. Further, Dang’s openings (depots 30) are formed in
the straight portions of the flexible bridging members (interconnecting
elements 24). Col. 8, ll. 34-41; figs 6a, 6b. Given this structure, it appears
that when Dang’s bridging members (interconnecting elements 24) flex
(bend), the openings (depots 30) will be deformed (smaller or larger
depending on the direction of flexing) to effect the bending of the flexible
bridging member.7
Thus, we cannot conclude by a preponderance of the evidence that the
openings (depots 30) of Dang’s flexible bridging (interconnecting elements
24) remain largely, but not wholly undeformed during flexing (bending) of
the bridging members as called for in claim 40. Consequently, we must
agree with Appellants that Dang does not disclose openings as called for in
independent claim 40. App. Br. 15-18. As such, we cannot sustain the
rejection of independent claim 40 and its dependent claims 41-46 and 48-53
as anticipated by Dang.

7 Though Dang’s stent 10 is designed to resist breaking or fracturing, the
stent 10 and its components remain flexible enough to be implantable
through a tortuous body lumen. Col. 1, ll. 8-12; col. 7, ll. 10-21; figs. 6a, 6b.
This suggests that the components of Dang’s stent 10, to include
interconnecting elements 24, and depots 30 thereon, deform during flexing.

Appeal 2010-002504
Application 10/849,324
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Claims 48 and 49 as obvious over Dang
The rejection of claims 48 and 49 as obvious over Dang suffers from
the same deficiency as the rejection of claim 40 as anticipated by Dang,
supra. As such, we cannot sustain the rejection of claims 48 and 49.

DECISION
We reverse the Examiner’s decision to reject claims 40-46 and 48-53.

REVERSED

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