Ex Parte Firstenberg et alDownload PDFPatent Trials and Appeals BoardApr 30, 201913857998 - (D) (P.T.A.B. Apr. 30, 2019) Copy Citation 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. 2 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. 3 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 4 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. 5 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 6 Copy with citationCopy as parenthetical citation