Appeal 2006-3287
Application 10/022,996
45, 58 USPQ2d at 1065-66. The court, focusing on the description of the
coaxial lumen structure as the “basic sleeve structure for all embodiments of
the present invention contemplated and disclosed herein” concluded that the
specification left “no doubt that a person skilled in the art would conclude
that the inventor envisioned only one design for the catheters taught in
SciMed's patents-an intermediate sleeve section containing two ... lumens
arranged coaxially.” 242 F.3d at 1339-40, 58 USPQ2d at 1061-62.
SciMed supports Appellants’ contention that one of ordinary skill in
the art would understand the term “side by side” as used in the appealed
claims as describing the type of configuration shown in Figure 34 of the
Specification (see Reply 3 (citing Specification, p. 48, ll. 9-14)). Cf. In re
Morris, 127 F.3d 1048, 1056, 44 USPQ2d 1023, 1029 (Fed. Cir. 1997)
(approving the Board's definition of claim terms consistent with their
definitions in CCPA cases). Moreover, Appellants’ Specification, read as a
whole, suggests that to properly function in accordance with the claimed
method, the long and short balloons must have a “side by side” configuration
of the type illustrated in Figure 34, rather than a coaxial configuration as
shown in Lam, during the step of “mounting the stent on a catheter.” See
Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1326-27, 63 USPQ2d
1374, 1381 (Fed.Cir. 2002)(specification and drawings provide context for
construction of the claims).4
4 Compare Specification, p. 48, ll. 9-14 with p. 16, ll. 9-12 and p. 25,
ll. 24-25 (Figure 3 illustrates two stents implanted “side by side”), p. 40,
ll. 10-13 (Figure 31 shows inner tubular members 172 and 174 within an
inflation lumen 160 in a “side-by-side, radially spaced apart relation”) and
p. 61, ll. 21-22 (In Figure 51, “the long balloon 500 is adjacent the short
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