Appeal No. 2004-2035
Application 09/978,763
The references relied on by the examiner are:
Palmaz 4,733,665 Mar. 29, 1988
Gianturco 4,800,882 Jan. 31, 1989
Wiktor 4,886,062 Dec. 12, 1989
Berg et al. (Berg) 5,464,650 Nov. 7, 1995
Hunter et al. (Hunter) 5,716,981 Feb. 10, 1998
(filed Jun. 7, 1995)
The examiner has advanced the following grounds of rejection on appeal:
claims 75, 76, 78, 80 through 82, 84 through 87 and 90 through 94 stand rejected under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
obvious over Berg (Office action mailed April 16, 2003, pages 2-3; 1 answer, pages 4-7);
claims 83, 89 and 95 stand rejected under 35 U.S.C. § 103(a) as being obvious over Berg (Office
action mailed April 16, 2003, page 3); and
claims 77 and 88 stands rejected under 35 U.S.C. § 103(a) as being unpatentable over Berg in
view of Hunter (Office action mailed April 16, 2003, pages 3-4).
Berg acknowledges Palmaz, Gianturco and Wiktor as prior art (col. 1, ll. 30-36) and
further refers to the stents disclosed in these references as those that “could be used in the
present invention” (col. 3, ll. 32-35). These references are of record and are referred to in
argument by the examiner (Office action mailed April 16, 2003, page 2; answer, e.g., pages 6-7)
and by appellants (brief, e.g., pages 3-4; reply brief, e.g., pages 4 and 5-6). These references are
necessary to support the examiner’s grounds of rejection and therefore, ordinarily, the failure to
include these references in the statements of the rejection is clearly impermissible. See In re
Hoch, 428 F.2d 1341, 1342 n. 3, 166 USPQ 406, 407 n.3 (CCPA 1970); cf. Ex parte Raske,
28 USPQ2d 1304, 1304-05 (Bd. Pat. App. & Int. 1993). However, in this instance, on the record
before us, the examiner’s failure to include Palmaz, Gianturco and Wiktor along with Berg in the
statements of the grounds of rejection is harmless error.
Appellants state that the appealed “claims are addressed collectively” (brief, page 3).
Thus, we decide this appeal based on appealed claims 75, 77 and 83 as representative of the
three
1 The examiner states in the answer (pages 3-4) that the grounds of rejection are stated in the
Office action mailed April 16, 2003.
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