Ex parte Fleming
Appeal 2009-005838, Appl. No. 10/834,687, Tech. Center 3700
March 18, 2010
The Applicant appealed a claim to a stent (a tube inserted into a blood vessel) which included a lattice with a closed (unexpanded) configuration and an open (expanded) configuration. The claim also defined the lattice as "made of a material that is normally prone to crushing, deformation or recoil."
The decision hinged on whether the term "normal" referred to the lattice in its unexpanded configuration or its expanded configuration.
In the Appeal Brief, the Applicant explained in some detail why the stent in the reference would not function properly if made of a material that was prone to crushing, deformation or recoil. However, the Applicant's argument assumed that the the "normally prone to" language referred to the expanded state. Yet the Examiner explained – in the final rejection, and then again in the Answer – that he was interpreting "normally" as referring to the unexpanded state, before the loops in the lattice interlocked.
The Board noted that:
It is not disputed that prior to deployment and interlocking, Stenzel's stent is designed to be flexible and therefore at least prone to deformation ... Thus, if we adopt the Examiner's construction of the term "normally," Stenzel clearly meets the claim.
The Applicant's specification described how the interlocked hoops in the lattice allow use of materials not appropriate "in traditional stents," such as materials "that exhibit crushing or recoil upon deployment of the stent." However, the Board refused to interpret "normally" as "upon deployment," stating that to do so would be to import limitations into the claims. The Board then stated that the Examiner's interpretation of "normally" (i.e., in the unexpanded state) was reasonable and not inconsistent with the specification, and affirmed the anticipation rejection.
My two cents: I've seen plenty of file histories where the Examiner's reading of the reference and/or the claims wasn't clear until the Examiner's Answer – but this wasn't one of them. It appears to me that the Applicant didn't really pay attention to what the Examiner was saying. Amending the claims from "normally" to "upon deployment of the stent" would probably have overcome the anticipation rejection. On the other hand, the Examiner also gave a "obvious in the alternative" rejection using the same reference, and the Board found that even using the Applicant's claim interpretation, the claim was obvious. So the application was probably doomed anyway.
I also wonder if "normally prone to" accurately describes the material (as the Applicant claimed), or should instead describe the lattice (the claimed element). The way I see it, the properties of the plastic itself don't change. Instead the properties of the lattice as a whole change when the hoops in the lattice lock together in the expanded state. So, I think "made of a material that is prone to crushing, deformation or recoil when the lattice is in the expanded state" is a better way to express the feature.