Appeal No. 2004-2035
Application 09/978,763
grounds of rejection. 37 CFR § 1.192(c)(7) (2003); see also 37 CFR § 41.37(c)(1)(vii) (effective
September 13, 2004; 69 Fed. Reg. 49960 (August 12, 2004); 1286 Off. Gaz. Pat. Office 21
(September 7, 2004)).
We affirm the grounds of rejection under U.S.C. § 103(a) and reverse the ground of
rejection under 35 U.S.C. § 102(b). Accordingly, the decision of the examiner is affirmed.
Rather than reiterate the respective positions advanced by the examiner and appellants,
we refer to the answer and to the brief and reply brief for a complete exposition thereof.
Opinion
As an initial matter, we find that when the claim terms are given their broadest
reasonable interpretation in light of the written description in the specification as interpreted by
one of ordinary skill in the art, and without reading into the claims any limitation or particular
embodiment disclosed in the specification, see, e.g., In re Morris, 127 F.3d 1048, 1054-55,
44 USPQ2d 1023, 1027 (Fed. Cir. 1997); In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320,
1322 (Fed. Cir. 1989), the plain language of claim 75 specifies a patterned stent comprising at
least any patterned stent coated on at least a portion thereof with any coating containing at least
any polyvinyl aromatic polymer(s) and any water-insoluble drug(s) that will prevent or inhibit
undesired cellular proliferation when released from the coated stent within a body over a time
frame of at least about seven days in an amount sufficient to prevent or inhibit undesired cellular
proliferation. The transitional term “comprising” opens the claim to include patterned stents that
at least have the limitations specified in the claim and any additional materials and
component(s). See generally, Exxon Chem. Pats., Inc. v. Lubrizol Corp., 64 F.3d 1553, 1555, 35
USPQ2d 1801, 1802 (Fed. Cir. 1995) (“The claimed composition is defined as comprising -
meaning containing at least - five specific ingredients.”); In re Baxter, 656 F.2d 679, 686-87, 210
USPQ 795, 802-03 (CCPA 1981) (“As long as one of the monomers in the reaction is propylene,
any other monomer may be present, because the term ‘comprises’ permits the inclusion of other
steps, elements, or materials.”). We further find that the term “containing” used in the definition
of the “polyvinyl aromatic polymer coating” has the same effect as the transitional term
“comprising.” See Exxon, supra; In re Panagrossi, 277 F.2d 181, 185, 125 USPQ 410, 413
(CCPA 1960). This transitional term opens the “polyvinyl aromatic polymer coating” to the
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