Ex Parte Shanley et al

Patent Trial and Appeal Board

Dec 26, 2012

11582818 (P.T.A.B. Dec. 26, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/582,818 10/18/2006 John F. Shanley CMI5058USNP1 1566
100369 7590 12/27/2012
Dergosits & Noah LLP
Three Embarcadero Center, Suite 410
San Francisco, CA 94111
EXAMINER
STEWART, JASON-DENNIS NEILKEN
ART UNIT PAPER NUMBER
3738
MAIL DATE DELIVERY MODE
12/27/2012 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 PATENT TRIAL AND APPEAL BOARD
__________

Ex parte JOHN F. SHANLEY and
PRASANNA VENKATESH MURALIDHARAN
__________

Appeal 2012-002107
Application 11/582,818
Technology Center 3700
__________

Before DEMETRA J. MILLS, FRANCISCO C. PRATS, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
expandable stent. The Examiner has rejected the claims as anticipated and
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

Appeal 2012-002107
Application 11/582,818

2
STATEMENT OF THE CASE
Independent claims 14 and 24 are illustrative of the appealed subject
matter, reads as follows (emphasis added):
14. An expandable stent comprising:
a plurality of struts extending in a substantially
longitudinal direction along an axis of the stent in an
unexpanded configuration; and
a plurality of hinge arrangements interconnecting the
struts, wherein each of the hinge arrangements includes a
central portion and four tapered hinges, each central portion is
connected to only the four tapered hinges and each one of the
four tapered hinges is connected at one end to the central
portion and at another end to a respective one of the plurality of
struts and has a smallest width closer to its respective strut and
a largest width closer to the central portion, and
wherein each of the central portions extends in a
substantially circumferential direction around the stent.

24. An expandable stent comprising:
a plurality of struts extending in a substantially
longitudinal direction along an axis of the stent in an
unexpanded configuration;
a plurality of first hinges interconnecting the struts,
wherein the plurality of first hinges each have a straight active
portion which extends in a substantially circumferential
direction around the stent in the unexpanded configuration
interconnected to adjacent ones of the plurality of struts; and
a plurality of interconnecting hinge arrangements
interconnecting the struts, wherein each of the interconnecting
hinge arrangements includes a central portion and four second
hinges each connected at one end to the central portion and at
another end to one of the plurality of struts; and
wherein each of the central portions extends substantially
circumferentially around the stent.

The claims stand rejected as follows:
Appeal 2012-002107
Application 11/582,818

3
I. Claims 14, 15, and 18-21 under 35 U.S.C. § 102(b) as being rejected
by Drasler et al. (US 6,245,101 B1, issued Jun. 12, 2001).
II. Claim 16 is rejected under 35 U.S.C. 103(a) as being unpatentable
over the combination of Drasler and Harish et al. (US 6,506,437 B1,
issued Jan. 14, 2003).
III. Claim 22 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Drasler.
IV. Claims 24, 26, and 27 under 35 U.S.C. § 102(b) as being anticipated
by Boatman et al. (US 2001/0027339 A1, published Oct. 4, 2001).
V. Claim 25 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over the combination of Boatman and Gianchandani et al. (US
2004/0149294 A1, published Aug. 5, 2004).
I.
Issue
The Examiner has rejected claims 14, 15, and 18-21 under 35 U.S.C.
§ 102(b) as being rejected by Drasler. The Examiner finds Drasler discloses
a stent having “a plurality of hinge arrangements” where “[t]he hinges have
a smallest width closer to each strut and a largest width closer to the central
portion.” (Ans. 4-5.)
Appellants contend that the Drasler stent arrangement area “is the
precise opposite of what is described in Figure 9 of the present application,
and at Paragraphs 0048-0049 of the specification.” (App. Br. 6.)
The issue presented is: Does the evidence of record support the
Examiner’s findings that Drasler discloses the stent hinge arrangement of
claim 14?
App
App

Figu
stent
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lication 11
FF1. Fi
re 9 is an e
according
FF2. El
FI
739 of t
739 each
tapered
731. Ea
with a n
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configur
along th
which w
location
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have a l
about 3:
tapered h
02107
/582,818
gure 9 of t
nlarged v
to the inv
ements of
G. 9 show
he stent of
include a
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ch of the
arrow en
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ould resu
closest t
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ength to w
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inge.
Find
he present
iew of an i
ention. (S
Fig. 9 are
s one of
FIG. 7. T
passive c
tions 786
four activ
d connect
passive c
eves a di
hinge. Th
lt in con
o the cen
ent, the
idth ratio
e width m
4
ings of Fac
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nterconne
pecificatio
summariz
the connec
he connec
entral por
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e hinge p
ed to the
entral po
stribution
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centrated
tral porti
active tap
of betwee
easured is
t
tion is rep
ction hing
n, ¶[0021
ed in the f
tion hinge
tion hing
tion 784 a
g to four
ortions 78
struts an
rtion 784
of the m
ntrast to a
strain in
on. Acc
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the smalle
roduced be

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ollowing e
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nd four a
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ent for a
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rably
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App
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cification,
FF3. D
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the hub
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“[U]nle
ocument n
02107
/582,818
¶ [0049];
rasler Figu
ements of
the four h
100. Each
idth 105, a
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usly joine
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ross secti
ontiguousl
a strut le
n 155, an
5, l. 58, to
ss a [prior
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re 4 is rep
Figure 4 a
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col. 16, l.
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5
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sly joined
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5, transitio
ion 135,
transition
s strut dim
idth 150,
al area 16
w
ses within
aimed but
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on one e
hich inclu
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The hing
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idth
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hich
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orners of
the

Appeal 2012-002107
Application 11/582,818

6
limitations arranged or combined in the same way as recited in the claim, it
cannot be said to prove prior invention of the thing claimed and, thus, cannot
anticipate under 35 U.S.C. § 102. ” Net MoneyIN, Inc. v. VeriSign, Inc.,
545 F.3d 1359, 1371 (Fed. Cir. 2008).
Analysis
We agree with Appellants that Drasler fails to disclose a plurality of
hinge arrangements interconnecting struts, where “[t]he hinges each have a
smallest width closer to its respective strut and a largest width closer to the
central portion.” (App. Br. 6.) We are not persuaded by the Examiner’s
arguments that Figure 4 of Drasler shows a stent where the hinges taper
toward the struts. (See e.g., Ans. 7-9.) The Examiner does not support the
rejection with reliance on the written description of Drasler. Furthermore,
“it is well established that patent drawings do not define the precise
proportions of the elements and may not be relied on to show particular sizes
if the specification is completely silent on the issue.” Hockerson-
Halberstadt, Inc. v. Avia Group Int'l, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000), citing In re Wright, 569 F.2d 1124, 1127 (CCPA 1977) (“Absent any
written description in the specification of quantitative values, arguments
based on measurement of a drawing are of little value.”).
Conclusion of Law
The evidence of record does not support the Examiner’s findings that
Drasler teaches all elements of claim 14. As claims 15 and 18-21 are
dependent on claim 14, and thus incorporate all of the limitations of claim
14, we reverse the rejection as to those claims as well.

Appeal 2012-002107
Application 11/582,818

7
II. – III.
The Examiner has rejected claim 16 under 35 U.S.C. 103(a) as being
unpatentable over the combination of Drasler and Harish and rejected claim
22 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Drasler.
Each of claims 16 and 22 depends from claim 14. As the Examiner’s
rationale for rejecting these claims as obvious does not remedy the
deficiencies of Drasler discussed above with respect to claim 14, we reverse
these rejections as well.

IV.
Issue
The Examiner has rejected claims 24, 26, and 27 as being anticipated
by Boatman et al. The Examiner finds that “[p]ivot point 60 is a point on the
‘straight active portion’ of the stent as illustrated” in Figure 3 of Boatman.
(Ans. 9.) The Examiner reasons that “the term ‘portion’ as claimed is
extremely broad, and only requires that an infinitesimal part of the hinge be
straight,” and that “[Figure 3 of Boatman] shows a portion of the curved
hinge region that is straight.” (Id. at 11.)
Appellants contend that claim 24 “requires that for the plurality of
hinges interconnecting the struts, there be a straight portion (the ‘active’
portion) extending substantially circumferentially around the stent in the
unexpanded configuration” and that “[t]his is not disclosed in Boatman.”
(App. Br. 8.) Appellants argue that the Examiner “points to no ‘straight’
‘portion,’ but rather in the general vicinity of pivot 60” of Figure 3 of
Boatman. (Reply Br. 4.) Appellants further argue that “[t]hese portions in
App
App

Boat
Br. 8
Exam
claim
Figu
¶ [00
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man have
; emphasi
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iner’s fin
24?
FF5. Fi

re 3 shows
30].)
FF6. B
mferentia
t 60, result
FF7. Th
02107
/582,818
a clear rad
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e presente
dings that
A
gure 3 of B
an enlarg
oatman dis
lly adjusta
ing in a ke
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d is: Does
Boatman
dditional
oatman i
ed, side vi
closes tha
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ature ... b
the eviden
discloses a
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s reproduc
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t “the bend
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loses as fo
ecause the
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flared outw
(Boatma
llows:
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rd support
ing the fea

f a stent.
59 of the
ard abou
n, ¶ [0075
ed.” (App
the
tures of

(Boatman,

t the pivot
].)

.

Appeal 2012-002107
Application 11/582,818

9
By straight it is meant that both sides of the hinge arrangement
are substantially straight in the as-cut configuration.
(Spec., ¶ [0047].)
Analysis
We agree with Appellants that the pivot point 60 of Boatman is
curved (FF5 and FF6) and thus does not read on the “straight active portion”
element of claim 24. Given its clearly curved shape, we are not persuaded
by the Examiner’s arguments that the pivot point 60 of Boatman is
“straight.” (See e.g., Ans. 9-11.) Also, the Examiner does not support the
rejection with reliance on any supporting disclosure in Boatman describing
pivot point 60 as being a straight element. In addition, we are not
convinced that, given Appellants’ disclosure and depiction of its “straight
active portion” (FF7), an ordinary artisan would have considered it
reasonable to interpret that element of claim 24 as encompassing an
infinitesimally small straight segment of an otherwise curved structure.
Conclusion of Law
The evidence of record does not support the Examiner’s findings that
Boatman teaches all elements of claim 24. As claims 26 and 27 are
dependent on claim 24, and thus incorporate all of the limitations of claim
24, we reverse the rejection as to those claims as well.
V.
The Examiner has rejected claim 25 under 35 U.S.C. 103(a) as being
unpatentable over the combination of Boatman and Gianchandani. Claims
25 depends from claim 24. As the Examiner’s rationale for rejecting claim
25 as obvious does not remedy the deficiencies of Boatman discussed above
as to claim 24, we reverse this rejection as well.
Appeal 2012-002107
Application 11/582,818

10
SUMMARY
We reverse the rejection of claims 14, 15, and 18-21 under 35 U.S.C.
§ 102(b) as being rejected by Drasler.
We reverse the rejection of claim 16 under 35 U.S.C. 103(a) as being
unpatentable over the combination of Drasler and Harish.
We reverse the rejection of claim 22 under 35 U.S.C. § 103(a) as
being unpatentable over Drasler.
We reverse the rejection of claims 24, 26, and 27 under 35 U.S.C. §
102(b) as being anticipated by Boatman.
We reverse the rejection of claim 25 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Boatman and Gianchandani.

REVERSED

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