Ex Parte Addonizio et al

Patent Trial and Appeal Board

Apr 29, 2016

12178898 (P.T.A.B. Apr. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/178,898 07/24/2008
31292 7590 05/03/2016
CHRISTOPHER & WEISBERG, P.A.
200 EAST LAS OLAS BOULEVARD
SUITE 2040
FORT LAUDERDALE, FL 33301
FIRST NAMED INVENTOR
Scott J. ADDONIZIO
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
1019-7CON6 7185
EXAMINER
WOZNICKI, JACQUELINE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
05/03/2016 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address( es):
ptomail@cwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SCOTT J. ADDONIZIO, DAVID L. CAMP, JR.,
GARY J. BECKER, and JOHN D. PAZIENZA
Appeal2014-000229
Application 12/178,898
Technology Center 3700
Before JENNIFER D. BAHR, BRETT C. MARTIN, and
LEE L. STEPINA, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2014-000229
Application 12/178,898
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-7 and 12-18. We have jurisdiction under 35 U.S.C.
§ 6(b ). We AFFIRM.
THE INVENTION
Appellants' claims are directed generally "to stents having helical
elements." Sub st. Spec. i-f 2. Claims 1 and 4 are independent. Claim 1,
reproduced below, is illustrative of the claimed subject matter:
1. An expandable stent having an unexpanded state, the
unexpanded stent comprising:
a body defining a cylindrical axis, the body including:
a first helical segment consisting of a plurality of first
undulations alternating with a plurality of substantially capital H-
shaped portions, wherein each first undulation spans between
two substantially capital H-shaped portions, each substantially
capital H- shaped portion defining two generally parallel linear
portions angled \~1ith respect to the cylindrical axis; and
a second helical segment consisting of a plurality of
second undulations alternating with a plurality of the
substantially capital H-shaped portions, wherein each second
undulation spans between two substantially capital H-shaped
portions, and each of the first undulations has a different
rotational orientation than each of the second undulations.
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Application 12/178,898
REFERENCE
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Brown US 2003/0083736 Al
REJECTION
May 1, 2003
The Examiner made the following rejection that is at issue in this
appeal:
Claim 1-7 and 12-18 stand rejected under 35 U.S.C §102(e) as being
anticipated by Brown. Ans. 4.
ANALYSIS
As an initial matter, we note that claims 16-18 were rejected by the
Examiner under 35 U.S.C. § 112, first paragraph, and that claims 2, 3, 5, and
6 were rejected by the Examiner under 35 U.S.C. § 112, second paragraph.
Ans. 3--4; Final Act. 6-7. As Appellants do not address the rejection of
claims 16-18 under 35 U.S.C. § 112, first paragraph, nor the rejection of
claims 2, 3, 5, and 6 under 35 U.S.C. § 112, second paragraph, Appellants
have waived any argument of error, and we summarily sustain the rejections
of claims 16-18 under 35 U.S.C. § 112, first paragraph, and the rejection of
claims 2, 3, 5, and 6 under 35 U.S.C. § 112, second paragraph. See In re
Berger, 279 F.3d 975, 984, 985 (Fed. Cir. 2002) (holding that the Board did
not err in sustaining a rejection under 35 U.S.C. § 112, second paragraph,
when the applicant failed to contest the rejection on appeal); see also 37
C.F .R. § 41.31 ( c) (2015) ("An appeal, when taken, is presumed to be taken
from the rejection of all claims under rejection unless cancelled by an
amendment filed by the applicant and entered by the Office").
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Appeal2014-000229
Application 12/178,898
Claims 1-7 and 12-18
Appellants argue claims 1-7 and 12-18 as a group, and state that the
dependent claims "are deemed to rise and fall with their respective
independent claims for the purposes of this appeal." App. Br. 4.
Accordingly, the disposition of the rejections of claims 1-7 and 12-18 turns
on our analysis of the rejection of independent claims 1 and 4. As claims 1
and 4 include similar limitations at issue, and claims 1 and 4 are argued
jointly by the Appellants, we select claim 1 as representative. See C.F.R.
§ 41.37(c)(l)(iv).
Appellants assert that Brown fails to disclose "a first helical segment
consisting of a plurality of first undulations alternating with a plurality of
substantially capital H-shaped portions, wherein each first undulation spans
between two substantially capital H-shaped portions, each substantially
capital H-shaped portion defining two generally parallel linear portions
angled with respect to the cylindrical axis." App. Br. 4--5. Appellants
further assert that Brown entirely lacks "two generally parallel linear
portions," and rather shows two curved peaks that are connected to one
another. Appellants allege that such a "dog-bone or crescent-wrench-shaped
segment does not constitute the claimed 'capital H-shaped segment."' App.
Br. 5.
Whether or not Brown teaches a "capital H-shaped segment" is
essentially irrelevant to this appeal because the terms "substantially" and
"generally" are important modifiers to the limitations at issue. These
modifiers, as used by Appellants in this context, are not defined in the
Specification, which results in broader claim scope than what Appellants
argue. Given this lack of clear definition, we interpret the scope of
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Appeal2014-000229
Application 12/178,898
"substantially" and "generally" by reference to what is shown in Appellants'
drawings. We note that what is shown in those drawings (e.g., Fig. 18 infra)
invites wide latitude in determining the scope of "substantially H-shaped" as
the "H" shown therein is both slanted and somewhat misshapen when
compared to the actual capital letter H.
During examination, claims are given their broadest reasonable
interpretation. See In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
(Fed. Cir. 2004). In applying the broadest reasonable interpretation to the
claim limitations "substantially capital H-shaped portion" and "generally
parallel linear portions," the Examiner states that "[t]he claimed invention
states 'substantially capital H-shaped' portions as opposed to 'capital H-
shaped portions' and 'generally parallel linear portions' as opposed to
'parallel, linear portions." Ans. 10. The distinction between these terms is
important.
The relative terms "generally" and "substantially" affect the meaning
of the claim and define a different shape than Appellants argue the claim
requires. As the Examiner states, and we agree:
Brown is not understood by the Examiner to teach a "capital H-
shaped" portion but DOES teach a broad but reasonable
interpretation of a "substantially capital H-shaped" portion.
Similarly, Brown does not teach a substantially capital H-
shaped portion with "parallel linear portions" but DOES teach a
broad but reasonable interpretation of a substantially capital H-
shaped portion defining two generally "parallel linear" portions.
By including the term "generally" in the claim, the reference of
Brown anticipates the claimed structure.
Ans. 10.
In the Final Rejection, the Examiner provided the marked up versions
of both Appellants' Figure 18 as well as Brown Figure 3 shown below,
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Application 12/178,898
which depict the Examiner's interpretation of the Brown reference in
comparison with Appellants' embodiment of the claims at issue. Final Act.
4.
H
..
Applicant's
Figure 18
8rcr1im
Figure 3
undulations
As can be seen in the marked up drawings, the Examiner has identified the
portions that represent a "substantially capital H-shaped" portion in each of
Brown's and the Appellants' stents as well as the undulations recited in the
claims. While the portion highlighted in Brown is different from
Appellants' drawings, we agree with the Examiner that, given the lack of
explanation of the term provided in Appellants' Specification, this
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Appeal2014-000229
Application 12/178,898
highlighted portion reasonably can be considered to be "substantially capital
H-shaped."
Appellants' choice to use the terms "substantially" and "generally"
thus allows the Examiner to reasonably interpret Brown as disclosing "a first
helical segment consisting of a plurality of first undulations alternating with
a plurality of substantially capital H-shaped portions, wherein each first
undulation spans between two substantially capital H-shaped portions, each
substantially capital H-shaped portion defining two generally parallel linear
portions angled with respect to the cylindrical axis" as claimed in
independent claim 1. Further, as noted above, the Examiner even goes so far
to admit that Brown does not teach the narrower "capital H-shaped" portion
as argued by Appellants, but that it is the broader language at issue that
causes Brown to anticipate the claims. We find that, on the whole,
Appellants' arguments are not commensurate with the scope of the claims
and do not accept the attempt to argue away the broad language contained
therein. As such, we sustain the rejection of claims 1 and 4, and therefore
also that of claims 2, 3, 5-7, and 12-18, as anticipated by Brown.
Appellants also argue that a similar characterization of a related
Brown reference (U.S. Patent No. 7,204,848) was proffered in a request for
reexamination of Appellants' U.S. Patent No. 7,682,384, and that such
characterization was rejected by the Examiner in that case. App. Br. 5-6.
The Brown reference used in the reexamination, however, is a different
reference from the Brown reference used by the Examiner in the subject
application; the patent under reexamination is not directly related to the
subject application; and the claim limitations at issue in the patent under
reexamination and the subject application are different limitations.
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Application 12/178,898
Accordingly, the determinations made in the reexamination of U.S. Patent
No. 7,682,384 are not dispositive of the issues of the present appeal. As
such, we do not find this argument persuasive.
DECISION
For the above reasons, we AFFIRM the Examiner's decision to reject
claims 1-7 and 12-18.
No time period for taking any subsequent action in communication
with this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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