Appeal 2007-2557
Application 10/094,866
Neither the Examiner nor the majority provide evidence establishing
that Ley teaches a segment (cell) that comprises a continuous strand of
material configured to include a repeating series of interconnected repeating
W-shaped strand configurations having a repeating dip, rise, dip, rise, loop,
dip, rise, dip, rise, loop patterned configuration as is required by Appellant’s
claim 1. Instead, all the Examiner and the majority have demonstrated is
that Ley teaches segments (cells) and associated support members
(interconnecting bridges) that together form a stent configuration that
approximates Appellant’s claimed structure. This rationale is clearly
illustrated by the “first pattern” and “second pattern” annotation of Fig. 1
(supra 8). This is, however, not what Appellant’s have claimed.
As set forth in KSR Int’l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741, 82
USPQ2d 1385, 1396 (2007).
a patent composed of several elements is not proved obvious
merely by demonstrating that each of its elements was,
independently, known in the prior art. Although common sense
directs one to look with care at a patent application that claims
as innovation the combination of two known devices according
to their established functions, it can be important to identify a
reason that would have prompted a person of ordinary skill in
the relevant field to combine the elements in the way the
claimed new invention does.
Both the Examiner and the majority rely on Ley to teach a stent within
the scope of Appellant’s claimed invention. However, as discussed above,
this reliance on Ley is misplaced. I recognize the Examiner’s and the
majority’s reliance on Hojeibane and Dinh to teach that it would have been
prima facie obvious to modify Ley’s stent to include a plurality of narrowing
in the interconnection bridge (Answer 6-8; supra 13-14). However, neither
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