Ex Parte Ducharme

Patent Trial and Appeal Board

Sep 17, 2012

11873167 (P.T.A.B. Sep. 17, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/873,167 10/16/2007 Richard W. Ducharme 10000-1073 1131
48003 7590 09/17/2012
BRINKS HOFER GILSON & LIONE/CHICAGO/COOK
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
EVERAGE, KEVIN D
ART UNIT PAPER NUMBER
3734
MAIL DATE DELIVERY MODE
09/17/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte RICHARD W. DUCHARME
__________

Appeal 2011-009520
Application 11/873,167
Technology Center 3700
__________

Before ERIC GRIMES, MELANIE L. McCOLLUM, and STEPHEN
WALSH, Administrative Patent Judges.

McCOLLUM, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a
nonexpandable stent and a method of using a nonexpandable stent. The
Examiner has rejected the claims as anticipated or obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
Appeal 2011-009520
Application 11/873,167

2
STATEMENT OF THE CASE
Claims 1-11, 14-17, and 21-25 are on appeal (App. Br. 5).1 We will
focus on claim 1, which reads as follows:
1. A nonexpandable stent comprising:
a tubular body having a distal portion, a proximal portion, a central
longitudinal portion between the distal and proximal portions, and a
substantially nonexpandable diameter,
wherein the tubular body comprises at least one securing element
integrally formed with the tubular body, the securing element and the tubular
body comprising a plurality of polymer layers,
wherein the securing element includes a reinforcement member
comprising a shape memory alloy, the reinforcement member being
substantially embedded within the polymer and extending along at least a
portion of a length of the tubular body;
wherein the securing element comprises a first configuration of the
reinforcement member for delivery to a treatment site within a body vessel
and a second configuration of the reinforcement member for deployment at
the treatment site.
Claims 1-11, 15-17, and 21-25 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Teague et al. (US 2001/0047164 A1, Nov. 29,
2001) (Ans. 3).
Claim 14 stands rejected under 35 U.S.C. § 103(a) as obvious over
Teague in view of Jayaraman et al. (US 6,939,377 B2, Sep. 6, 2005)
(Ans. 6).
ANTICIPATION
The Examiner finds that Teague discloses a nonexpandable stent
comprising:

1 Claims 18-20 are also pending but have been withdrawn from
consideration (App. Br. 5).
Appeal 2011-009520
Application 11/873,167

3
a tubular body (12) having a distal portion, a proximal
portion, a central longitudinal portion between the distal and
proximal portions (see Figure 5), and a substantially
nonexpandable diameter;
wherein the tubular body comprises at least one securing
element (32, 34) integrally formed with the tubular body, the
securing element and the tubular body comprising a plurality of
polymer layers (see Paragraph 34);
wherein the securing element includes a reinforcement
member (22) comprising a shape memory alloy (see
Paragraphs 38 and 39), the reinforcement member being
substantially embedded within the polymer and extending along
at least a portion of a length of the tubular body (see Figures 4B
and 5);
wherein the securing element comprises a first
configuration of the reinforcement member for delivery to a
treatment site within a body vessel and a second configuration
of the reinforcement member for deployment at the treatment
site (see Paragraph 38).
(Ans. 3-4.)
Appellant argues that “Teague does not disclose a nonexpandable
stent that includes a tubular body and a securing element comprising a
plurality of polymer layers, where the securing element includes a
reinforcing element comprising a shape memory alloy” (App. Br. 13).
The Examiner responds that “Teague’s statement [in paragraph 34,]
wherein the elongated member and the reinforced retention structure may
include different flexible materials, . . . provides evidence for a plurality of
polymer layers” (Ans. 7-8). We do not agree for the reasons set forth in the
Reply Brief, pages 1-3. We therefore reverse the anticipation rejection.
Appeal 2011-009520
Application 11/873,167

4
OBVIOUSNESS
The Examiner additionally relies on Jayaraman for disclosing
Thoralon (Ans. 6), which is the polymer recited in claim 14. The Examiner
concludes that it would have been obvious “to use Thoralon to make the
device disclosed by Teague” (id.). However, the Examiner does not set forth
a prima facie case that it would have been obvious to include a plurality of
polymer layers, as recited in claim 1 on which claim 14 depends. We are
therefore compelled to reverse the obviousness rejection.

REVERSED

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