Appeal 2007-2026
Application 10/131,772
The Examiner reproduced Ehr’s Fig. 16 and darkened the cells he
interpreted to be “I-shaped, bonate cell structures” (id.).
Appellants argue that Figure 23 of the instant Specification provides
an example of a stent having I-shaped cells (Br. 5). In contrast, Appellants
argue, “the Examiner merely drew an ‘I’ in the cell structure and declared
that this meant that the cell structure is a bonate cell structure that is I-
shaped.” (Br. 7). Appellants argue that the cells indicated by the Examiner
are not I-shaped because they do not have relatively wide end portions that
extend from both sides of the relatively narrow portion (id.; Reply Br. 3).
The Examiner argues that it is reasonable to interpret the term
“I shaped” as encompassing structures “generally shaped like an I” because
the I-shaped structures in Appellants’ Figures 17, 21a, and 23 are not
perfectly I-shaped, having instead “thickness, curvature and a gradual
tapering thickness where the sections meet. [The] Examiner asserts that
since this broad interpretation has been applied to the instant invention, so to
can it be applied to the prior art” (Answer 7-8). The Examiner argues that
the Specification provides “no reference . . . to give guidance as to how to
interpret ‘I’-shaped” (id. at 8).
It is well settled that “claims in an application are to be given their
broadest reasonable interpretation consistent with the specification and that
claim language should be read in light of the specification as it would be
interpreted by one of ordinary skill in the art.” In re Sneed, 710 F.2d 1544,
1548, 218 USPQ 385, 388 (Fed. Cir. 1983) (citation omitted).
In the instant case, as pointed out by the Examiner (Answer 8), the
Specification does not define the term “I shaped.” As also pointed out by
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