Appeal 2007-2557
Application 10/094,866
the Examiner nor the majority explain how Hojeibane and Dinh make up for
the deficiencies in Ley as discussed above. Accordingly, it is my opinion
that the Examiner failed to meet his initial burden9 of establishing a prima
facie case of obviousness. Similarly, I find that the majority’s analysis is not
supported by the factual evidence on this record. Accordingly, I would
reverse the rejection of claim 1 under 35 U.S.C. § 103(a) over the
combination of Ley and Hojeibane or Ley and Dinh.
Claim 4:
While the majority focuses on claim 1, I note that independent claim 4
does not require the W-shaped strand configuration set forth in claim 1. To
the contrary, independent claim 4 requires that each segment comprises a
continuous strand of material that:
1. Is interconnected end to end so as to generally encompass a radial
space within the segment and
2. Comprises a repeating series of interconnected repeating S-shaped
strand configurations.
The remainder of claim 4 is the same as claim 1.
Neither the Examiner nor the majority favor this record by directing
attention to a teaching in Ley of a stent having an S-shaped strand
configuration. “In rejecting claims under 35 U.S.C. § 103, the [E]xaminer
bears the initial burden of presenting a prima facie case of obviousness.
Only if that burden is met, does the burden of coming forward with evidence
or argument shift to the applicant.” Rijckaert, at 1532, 28 USPQ2d at 1956,
9 The initial burden of presenting a prima facie case of obviousness rests on
the Examiner. Oetiker, at 1445, 24 USPQ2d at 1444.
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