Ex Parte Welsh et al

Board of Patent Appeals and Interferences

Jan 17, 2012

11205828 (B.P.A.I. Jan. 17, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte GREG P. WELSH and LEX P. JANSEN
__________

Appeal 2010-008183
Application 11/205,828
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for anticipation. We have jurisdiction under 35 U.S.C. § 6(b).
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Application 11/205,828

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STATEMENT OF THE CASE
The claimed stent with recesses solves the problem of foreshortening
of the stent. (See Spec. 1.) Foreshortening of a stent occurs when a
serpentine stent is expanded from an unexpanded state to an expanded state
as in “FIG. 4b, the angle Θ2 of the struts increases relative to the longitudinal
axis and the effective strut length decreases from L to L-ΔL resulting in
foreshortening of the stent.” (Id.)

The following claims are representative and read as follows:
1. A stent comprising a serpentine portion extending about the
circumference of the stent, the serpentine portion having a first end and a
second end, the serpentine portion having a plurality of turns at the first end
and a plurality of turns at the second end and struts extending therebetween,
each of the plurality of turns at the first end and the second end having a
length, at least one of the turns at the first end or at least one of the turns at
the second end has a shaped recess thereon, and
wherein the recess extends substantially the length of the turn.

11. A stent comprising a serpentine portion extending about the
circumference of the stent, the serpentine portion having a first end and a
second end, the serpentine portion having a plurality of turns at the first end
and a plurality of turns at the second end and struts extending therebetween
wherein at least one strut has a shaped recess thereon, the shaped recess
extending along substantially but not the entire length of said strut.

Cited References

The Examiner relies on the following prior art references:

Harish et al. US 6,506,437 B1 Jan. 14, 2003
Dang et al. US 6,758,859 B1 Jul. 6, 2004

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Application 11/205,828

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Grounds of Rejection
1. Claims 1, 3-6 and 8-10 are rejected under 35 U.S.C. § 102(e) for anti-
cipation over Harish.
2. Claims 11, 13, 15 and 19-20 are rejected under 35 U.S.C. §102(e) for
anticipation over Dang.

FINDINGS OF FACT
The findings of fact are set forth in the Answer at pages 3-7.
Highlighted facts are reproduced below.
1. The Examiner finds that the “turn” of the present application is not
defined as 180 degrees, and thus the turn of Harish below is the
length of the depot. (Ans. 6.)

The figure above shows a portion of the strut of Harish reproduced
and marked by the Examiner, as in the Answer, page 6.
2. Paragraph [120] of the Specification is reproduced below:
The length of the cut-out region may also be adjusted in
accordance with the invention. For the cut-out regions in the turns
of the serpentine portion, for example, a minimum length cut-out
region 116 may be found, for example, in FIG. 17a while a
maximum length cut-out region 116 may be found in FIG. 18, for
example. Cut-out region 116 shown in FIG. 18 extends along the
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Application 11/205,828

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entire length of the radiuses portion of turn 105. It is noted that
tum 105 includes a plurality of cut-out regions 116. Any of the
other embodiments of the invention may be modified to provide a
plurality of cut-out regions per turn. For example, in those
embodiments of the invention in which the cut-out regions are
arcuate, multiple arcuate regions may be provided.

(Reply Br. 4, (emphasis added).)

3. Figure 18 of the Specification, referenced in paragraph [120] above
is reproduced below.

Figure 18 shows a turn in a stent in accordance with the claimed
invention where the cut-out region extends along the entire length of the
radius portion of the turn.
4. Figure 6B of the Specification is reproduced below.

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Fig. 6B shows struts 104 with shaped recesses 30 extending along
substantially but not the entire length of the strut.

5. Figure 4 of Dang is reproduced below.

Figure 4 shows the stent of Dang having a plurality of recesses along the
strut.
Discussion
ISSUE
The Examiner concludes that Harish and Dang teach each the
elements of the claimed stent. In particular, the Examiner argues that
Harish, consistent with FF1, discloses a shaped recess substantially the
length of the turn.
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Appellants argue that “the depot of Harish does not extend
substantially the length of a turn of the Harish… stent.” (App. Br. 11.)
The issue is: Does the cited prior art support the Examiner’s rejection
of the claims for anticipation?

PRINCIPLES OF LAW
“[A] claim must be read in view of the specification of which it is a
part.” Renishaw PLC v. Marposs Societa’ per Azioni, 158 F.3d 1243,
1248(Fed. Cir. 1998).
“Ultimately, the interpretation to be given a [claim] term can only be
determined and confirmed with a full understanding of what the inventors
actually invented and intended to envelop with the claim. The construction
that stays true to the claim language and most naturally aligns with the
patent’s description of the invention will be, in the end, the correct
construction.” Id. at 1250.
In order for a prior art reference to serve as an anticipatory reference,
it must disclose every limitation of the claimed invention, either explicitly or
inherently. See In re Schreiber, 128 F.3d 1473, 1477(Fed. Cir. 1997). To
anticipate, every element and limitation of the claimed invention must be
found in a single prior art reference, arranged as in the claim. Karsten Mfg.
Corp. v. Cleveland Golf Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001).

ANALYSIS
Harish
We do not agree with the Examiner’s claim interpretation. “[A] claim
must be read in view of the specification of which it is a part.” Renishaw
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PLC at 1248. . Referencing FF2 and FF3, as well as paragraph 120 of the
Specification, we conclude that Figure 18 shows a turn in a stent in
accordance with the claimed invention where the cut-out or recessed region
extends along the entire length of the radius portion of the turn or
substantially the length of the turn, as claimed. Thus we do not agree with
the Examiner that FF1 or Harish discloses a recess substantially the length of
the turn, as claimed. Harish would appear to disclose a recess in only a
partial length of a turn.
We further note that claim 1 recites “a shaped recess” and “the recess
shape” which we interpret to be a single recess shape not a plurality of
recess shapes. Harish discloses a plurality of recess shapes in the turn of a
strut. For these reasons, the anticipation rejection in view of Harish is
reversed.

Dang
We are persuaded by the Appellants’ argument that Dang does not
disclose a single shaped recess on a strut, the shaped recess extending along
substantially but not the entire length of the strut as in claim 11. (See App.
Br. 13.)
Dang would reasonably appear to disclose multiple recesses along the
length of the strut. Dang further does not disclose the shaped recess
extending along substantially but not the entire length of the strut as in claim
11. The anticipation rejection over Dang is reversed.

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Application 11/205,828

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CONCLUSION OF LAW
The cited references do not support the Examiner’s anticipation
rejections.

REVERSED

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