Ex Parte Firstenberg et al

Patent Trials and Appeals Board

Apr 30, 2019

13857998 - (D) (P.T.A.B. Apr. 30, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/857,998 04/06/2013
11050 7590 05/02/2019
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
Laura Elizabeth Firstenberg
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2001.1451101 5815
EXAMINER
BARIA, DINAH N
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
05/02/2019 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte LAURA ELIZABETH FIRSTENBERG,
CLAIRE M. McLEOD, SHANNON TAYLOR,
ANDREA LAI, and SANDRA LAM
Appeal2018-006499
Application 13/857,998
Technology Center 3700
Before DANIELS. SONG, BRETT C. MARTIN, and
ARTHUR M. PESLAK, Administrative Patent Judges.
MARTIN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 appeal under 35 U.S.C. § 134 from the Examiner's final
rejection of claims 1-8, 10, 11, 13-15, 24, 26, 27, 30, and 35-38. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is Boston Scientific
Scimed, Inc. App. Br. 4.
Appeal2018-006499
Application 13/857,998
THE INVENTION
Appellants' claims are directed generally to "an endoprosthesis where
a preferably polymeric coating has a number of surface features such as
protrusions that are arranged in a micropattem." Spec. 2, 11. 26-28. Claim
1, reproduced below, is illustrative of the claimed subject matter:
1. An endoprosthesis having an expanded state and an
unexpanded state, the endoprosthesis comprising:
a stent, wherein the stent has an inner surface defining a
lumen, an outer surface, a first end, a second end, and a
longitudinal axis extending therebetween, and a thickness
defined between the inner surface and the outer surface, wherein
the stent has a plurality of openings extending through the
thickness;
an adhesive layer disposed on the outer surface of the
stent; and
a plurality of spaced apart elongated polymeric strips
disposed helically over and adhered to the adhesive layer, each
elongated polymeric strip extending at least twice around a
circumference of the stent, wherein a portion of the stent is
exposed between longitudinally adjacent portions of a single
polymeric strip, the plurality of spaced apart polymeric strips
comprising a base having an inner surface and an outer surface
including a plurality of protrusions extending outwardly from the
base, wherein the protrusions are arranged in a micropattem,
wherein the base covers the openings of the stent, wherein each
of the plurality of protrusions comprises a micropillar, each
micropillar extending between a base portion at the base of the
polymeric strip and a top surface at an end of the micropillar
opposite the base portion.
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Appeal2018-006499
Application 13/857,998
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Martin
Burnside
Fearing
Fukui
Karp
us 6,042,605
US 6,626,939 B 1
US 6,872,439 B2
US 2009/0130372 Al
US 2011/0021965 Al
REJECTIONS
The Examiner made the following rejections:
Mar. 28, 2000
Sept. 30, 2003
Mar. 29, 2005
May 21, 2009
Jan. 27, 2011
Claims 26 and 27 stand rejected under 35 U.S.C. § 112, second
paragraph, as being indefinite. Ans. 2.
Claims 1-8, 10, 11, 15, 30, and 38 stand rejected under 35 U.S.C.
§ I03(a) as being unpatentable over Martin and Karp. Ans. 3.
Claim 13 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Martin, Karp, and Burnside. Ans. 9.
Claim 14 stands rejected under 35 U.S.C. § I03(a) as being
unpatentable over Martin, Karp, and Fukui. Ans. 10.
Claims 24, 26, and 27 stand rejected under 35 U.S.C § I03(a) as being
unpatentable over Martin, Burnside, and Karp. Ans. 11.
Claims 35-37 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Martin, Karp, and Fearing. Ans. 14.
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Appeal2018-006499
Application 13/857,998
ANALYSIS
Drawing Objections
Appellants address certain drawing objections not addressed by the
Examiner. See, e.g., Reply Br. 2. Drawing objections are petitionable
matters and are not within our jurisdiction. Accordingly, we do not address
Appellants arguments as to this issue.
Indefiniteness
The Examiner rejects claims 26 and 27 as indefinite, asserting that it
is unclear how to measure the height of the protrusions due to the uneven
surfaces thereon. Ans. 2. As Appellants point out, however, both the
Specification and the dictionary definition of the term height direct one of
skill in the art as to how to measure the height of the disclosed protrusions
and that such height is measured from the bottom of the protrusion to the
highest point regardless of any uneven surface. See, e.g., Reply Br. 3. We
agree and, therefore, do not sustain this rejection.
Obviousness
Regarding the obviousness rejections, the Examiner finds that Martin
teaches most of the claimed elements, but fails to teach the outer surface
having a plurality of protrusions. Ans. 3. The Examiner finds such
protrusions in Karp and concludes that the combination would be obvious
"in order to aid the endoprosthesis of Martin to adhere to vessel walls in a
manner that is less damaging to tissue." Ans. 4.
Appellants are correct, however, that this combination fails for at least
two reasons. First, we agree that the discussion in Karp relating to
protrusions being less damaging to tissue is in comparison to an uncovered
stent and not just stents in general. See, e.g., Reply Br. 4. Given that Martin
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Appeal2018-006499
Application 13/857,998
is already a covered stent, it already embodies a stent that is less damaging
to tissue as discussed in Karp. Second, Appellants are also correct that
Martin already includes flared ends for securing the stent within the vessel
walls and so there would be no need for protrusions to be added as Martin's
stent already has means for proper securement in the vessel. Reply Br. 4.
As such, we do not agree that one of skill in the art would combine the
references as suggested by the Examiner.
Regarding claim 30, we further agree with Appellants that "the
Examiner failed to provide any rational reason why one of ordinary skill in
the art would modify the protrusions to achieve the specific shape recited in
the claims." Reply Br. 5. The Examiner acknowledges that none of the
cited art shows concave protrusions, but then asserts that because Karp
generally teaches that its protrusions can have a variety of shapes and sizes,
concave protrusions would have been obvious. Ans. 19 ( citing Karp
,r 95). Karp, while generally disclosing a variety of shapes and sizes, specifically
lists numerous such shapes, none of which is the concave shape claimed. As such,
it would appear that Karp contemplated numerous shapes and none of those were
concave protrusions as claimed.
Additionally, the Examiner asserts that Appellants have shown no
criticality as to the claimed concave shape. Ans. 21. Appellants are correct,
however, that there is no "rule or requirement for a specification to provide
criticality in order for a structural element to be properly considered for its
structure." Reply Br. 6 (emphasis added). For the above reasons, we do not
sustain the Examiner's rejection of the claims over Martin and Karp. None of the
secondary references cures these defects and, as such, all rejections based on the
combination of Martin and Karp are reversed.
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Appeal2018-006499
Application 13/857,998
DECISION
For the above reasons, we REVERSE the Examiner's decision to
reject claims 1-8, 10, 11, 13-15, 24, 26, 27, 30, and 35-38.
REVERSED
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