Ex Parte Krivoruchko et al

Patent Trial and Appeal Board

Jan 14, 2013

11624343 (P.T.A.B. Jan. 14, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte MICHAEL KRIVORUCHKO and JOSEPH LESSAR
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Appeal 2012-000877
Application 11/624,343
Technology Center 3700
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Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a stent.
The Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We affirm.

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Application 11/624,343

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Statement of the Case
Background
“The present invention relates generally to a stent with improved
flexibility. More specifically, the present invention relates to a welded stent
having increased flexibility at the welded connections.” (Spec. 1 ¶ 0001.)
The Claims
Claims 28-33 and 35 are on appeal.
1
Claim 28 is representative and
reads as follows:
1. A stent comprising:
a first circumferential ring formed of a first continuous
wire and having an outer surface facing away from a
longitudinal axis and having a sinusoidal shape defined by a
plurality of peaks connected to a plurality of valleys by a
plurality of segments;
a second circumferential ring disposed longitudinally
adjacent the first ring and being formed of a second continuous
wire and having an outer surface facing away from the
longitudinal axis and having a sinusoidal shape defined by a
plurality of peaks connected to a plurality of valleys by a
plurality of segments; and
a connector connecting a peak of the first ring to a valley
of the second ring, the connected peak of the first ring
comprising a deformed peak portion unitary with and flanked
by non-deformed peak portions on opposite sides, the deformed
peak portion having i) an outer surface recessed below outer
surfaces of the flanking non-deformed peak portions, and ii) an
extension consisting of material of the first continuous wire;
wherein the extension of the deformed peak portion
protrudes from the peak to abut the valley so as to space the
non-deformed peak portions from the valley.

1
Claims 1, 4-10, 12-16, and 21-27 are withdrawn (see App. Br. 5).
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The issue
The Examiner rejected claims 28-33 and 35 under 35 U.S.C. § 103(a)
as obvious over Padilla
2
and Laitenberger
3
(Ans. 4-7).
The Examiner finds that:
Padilla et al. disclose a stent comprising: a first
circumferential ring, formed from a continuous wire, having
an outer surface facing away from a longitudinal axis and
having a sinusoidal shape defined by a plurality of peaks
connected to a plurality of valleys by a plurality of
segments; a second circumferential ring, formed from a
continuous wire, disposed longitudinally adjacent the first
ring and having an outer surface facing away from the
longitudinal axis and having a sinusoidal shape defined by a
plurality of peaks connected to a plurality of valleys by a
plurality of segments

(Ans. 4). The Examiner acknowledges that “Padilla et al. fail to disclose
item „ii)‟ as claimed. Padilla et al. disclose that the deformed portion of the
peak and valley can be connected by any suitable means (paragraph 0059).”
(Id. at 5.) The Examiner finds that Laitenberger teaches “connectors for a
peak and valley of a stent comprising an extension consisting of deformed or
compressed (p. 35, lines 19-28) material of a first or second ring” (id.). The
Examiner finds that Laitenberger teaches “wherein the extension of the
deformed peak or valley portion protrudes to abut a similar extension from
an adjacent peak or valley so as to space the non-deformed peak portions
from the non-deformed valley portions” (id.).

2
Padilla et al., EP 1 579 824 A2, published Sep. 28, 2005.
3
Laitenberger et al., WO 2005/067816 A1, published Jul. 28,
2005.
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The Examiner finds it obvious to
have used the connectors of Laitenberger et al. to connect
the deformed portions of the peaks and valleys of Padilla et
al. because Padilla et al. suggest the use of alternate
connection means and the extensions of Laitenberger et al.
are configured as a compressed joint which would fit well
with the compressed peaks and valleys of Padilla

(Ans. 5). The Examiner finds “it would have additionally been obvious to
one of ordinary skill in the art to have provided the compressed connectors
of Laitenberger et al. to the deformed peaks and valleys of Padilla et al in
order to enhance flexibility for delivery” (id. at 6).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner‟s conclusion that Padilla and Laitenberger
render claim 28 obvious?
Findings of Fact
The following findings of fact (“FF”) are supported by a
preponderance of the evidence of record.
1. Padilla teaches that the “stent of the invention generally
includes a plurality of radially expandable cylindrical elements which are
relatively independent in their ability to expand and to flex relative to one
another” (Padilla, col. 5, ll. 11-14).
2. Padilla teaches that “[i]nterconnecting elements or struts
extending between adjacent cylindrical elements provide increased stability
and are preferably positioned to prevent warping of the stent upon the
expansion thereof” (Padilla, col. 5, ll. 17-21).
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3. Padilla teaches that a “preferred structure for the expandable
cylindrical elements which form the stents of the present invention are
generally circumferential undulating patterns, e.g., a generally serpentine
pattern” (Padilla, col. 5, ll. 55-58).
4. Padilla teaches that “other geometric patterns could also be
used, such as sinusoidal wave-like structures” (Padilla, col. 17, ll. 4-5).
5. Figure 23a of Padilla is reproduced below:

“In FIG. 23a, wire 170 is pulled from a spool 172 and then through a
necking mechanism 174. . . the necking mechanism 174 selectively contacts
the wire 170 as the wire is drawn therethrough, thus creating
narrow portions 176 on the wire 170” (Padilla, col. 15, ll. 39-45).
6. Figure 23b of Padilla is reproduced below:

Figure 23b shows “narrow portions 176 having a reduced thickness 175
compared to the larger thickness 177 of the rest of the wire 170” (Padilla,
col. 15, ll. 47-49).
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7. Figure 23c of Padilla is reproduced below:

Figure 23c depicts “a side view of a wire being formed into a stent” (Padilla,
col. 7, ll. 45-46).
8. Padilla teaches that the “wire 170 is bent or otherwise deformed
into a desired stent pattern 178 (of which only a portion is depicted in FIG.
23c)” (Padilla, col. 15, ll. 52-54).
9. Padilla teaches that the “stent pattern 178 may include securing
points 179 where adjacent wire portions are spot-welded or otherwise
secured together. Note that the thin portions 176 of the wire 170 are
positioned so as to correspond to curved portions 180 of the stent pattern”
(Padilla, col. 15, l. 54 to col. 16, l. 1).
10. Padilla teaches that in “addition to the physical machining
methods outlined above, the reduction in thickness can be achieved through
a variety of other methods, including . . . laser ablation . . . where laser
cutting is used to cut the stent pattern, the laser might also be used to thin
desired portions of the rough stent form” (Padilla, col. 13, ll. 2-11).
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11. Laitenberger teaches that “a stent can be made up from a
number of separate loops that are insulated from each other, and with each
of these loops exhibiting a „balanced‟ configuration, so that the total electro-
magnetic effect of the stent cage is reduced, even eliminated” (Laitenberger
19).
12. Laitenberger teaches that “in order to make available effective
joints that do not rely (solely) on adhesive . . . some degree of three-
dimensionality is indicated” (Laitenberger 35).
13. Figure 12 of Laitenberger is reproduced below:

Figure 12 is an isometric view of a join construction “include a retaining
strut” (Laitenberger 17).
14. Laitenberger teaches that:
Turning first to Fig. 12, between the facing noses 60, 62 of
adjacent zig-zag stenting rings, a joint is provided that
places parallel fingers 64, 66 on nose 62 into the interdigital
spaces between three parallel fingers 68, 70, 72 on nose 60.
It will be appreciated that such a structure multiplies the
surface area of adhesive bonding between the noses 60 and
62, for any given gap length between these two noses.

(Laitenberger 35-36.)
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15. Laitenberger teaches that “adhesive joints are relatively weak in
peeling mode but the interlocking fingers design of Figs. 12 and 13 is
relatively resistant to any peeling because the sort of stresses that would lead
to peeling are resisted by the outer fingers 70 and 72 which encapsulate the
adhesive bonded surfaces” (Laitenberger 36).
Principles of Law
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
“If a person of ordinary skill can implement a predictable variation, §
103 likely bars its patentability.” Id. at 417. As noted by the Court in KSR,
“[a] person of ordinary skill is also a person of ordinary creativity, not an
automaton.” 550 U.S. at 421.
Analysis
Padilla teaches a stent which comprises a first circumferential ring
with a sinusoidal shape and a second circumferential ring with a sinusoidal
shape where the first and second rings are joined by a connector between the
peak of a first ring to the valley of a second ring (FF 1-4). Padilla teaches an
embodiment shown in figures 23a-c where the narrow portions 176 are
formed on the wire 170 (FF 5-7), and “the thin portions 176 of the wire 170
are positioned so as to correspond to curved portions 180 of the stent
pattern” (Padilla, col. 15, ll. 57-58; FF 9). The Examiner finds that “Padilla
et al. fail to disclose item [„(ii)‟] as claimed. Padilla et al. disclose that the
deformed portion of the peak and valley can be connected by any suitable
means (paragraph 0059)” (Ans. 5).
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Laitenberger teaches extensions consisting of each of the
circumferential rings “in order to make available effective joints that do not
rely (solely) on adhesive . . . some degree of three-dimensionality is
indicated” (Laitenberger 35; FF 12). Laitenberger teaches that:
Turning first to Fig. 12, between the facing noses 60, 62 of
adjacent zig-zag stenting rings, a joint is provided that
places parallel fingers 64, 66 on nose 62 into the interdigital
spaces between three parallel fingers 68, 70, 72 on nose 60.
It will be appreciated that such a structure multiplies the
surface area of adhesive bonding between the noses 60 and
62, for any given gap length between these two noses.

(Laitenberger 35-36; FF 14.)
Applying the KSR standard of obviousness to the findings of fact, we
agree with the Examiner that the ordinary artisan would have reasonably
modified the joints between the circumferential rings of Padilla to include
the fingers of Laitenberger on the rings for joining since this would increase
the adhesive bonding between the rings and resist peeling of the joints (FF
13, 14). Such a combination is merely a “predictable use of prior art
elements according to their established functions.” KSR, 550 U.S. at 417.
Appellants contend that “[w]here neither Padilla nor Laitenberger
discloses a stent ring formed of a first continuous wire formed into a
sinusoidal shape wherein a deformed peak portion has an extension
consisting of the material of the wire, their combination cannot do so” (App.
Br. 11). Appellants also contend that the Examiner‟s reasoning “completely
disregards the continuous wire limitations in the claims. That is improper”
(id. at 12)
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We are not persuaded. Claim 28 is drawn to a stent, not a method of
making the stent. The issue is whether Padilla and Laitenberger render the
structure of the stent itself obvious in this product by process claim. The
weight of authority holds that the patentability of product-by-process claims
is not dependent on process limitations. See In re Thorpe, 777 F.2d 695, 697
(Fed. Cir. 1985) (“even though product-by-process claims are limited by and
defined by the process, determination of patentability is based on the product
itself;” “[t]he patentability of a product does not depend on its method of
production;” and “[i]f the product in a product-by-process claim is the same
as or obvious from a product of the prior art, the claim is unpatentable even
though the prior product was made by a different process.”) We agree with
the Examiner that the structure of the stent of Padilla and Laitenberger
satisfies the structural limitations of claim 28.
Appellants contend that “Laitenberger‟s joint fingers are integral parts
of a stent that is laser cut from metal tubing, it is not only unobvious to use
such a laser-cut finger joint in Padilla‟s sinusoidal wire stent, but it is not
apparent how such a hybrid assembly could be accomplished” (App. Br. 11).
We are not persuaded. As Appellants correctly note, Laitenberger
teaches formation of a stent using laser cutting. Padilla also teaches that in
“addition to the physical machining methods outlined above, the reduction in
thickness can be achieved through a variety of other methods, including . . .
laser ablation . . . where laser cutting is used to cut the stent pattern, the laser
might also be used to thin desired portions of the rough stent form” (Padilla,
col. 13, ll. 2-11; FF 10). Consequently, since both references suggest the use
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of laser cutting, the hybrid assembly would reasonably be formed using laser
cutting in the place of machining (FF 10).
Appellants contend that “[t]here is no plausible, reasoned explanation
as to why or how it would have been obvious to one of ordinary skill to
create appellants‟ claimed invention merely from the disclosures of Padilla
and Laitenberger” (App. Br. 12).
We are not persuaded. The Examiner provides a specific reason to
combine the teachings of Padilla and Laitenberger. The Examiner finds that
the combination functions “to enhance flexibility for delivery” of the stent
into a body lumen (Ans. 6). We would also note that Laitenberger teaches
that forming interlocking joints improves adhesive bonding (FF 14) which
would strengthen the connection between the adjacent circumferential rings.
Appellants contend that the “rejections under 35 U.S.C. § 103(a) also
are improper because they fail to resolve and articulate the level of ordinary
skill in the art that was applied” (App. Br. 13).
We are not persuaded. Though the Examiner did not make a specific
finding regarding the level of skill in the art, the Appellants have not argued
that the proposed modification was beyond the level of skill in the art, and
we consider the applied prior art, i.e., Padilla and Laitenberger, to be
reflective of the level of skill in the art. See In re GPAC Inc., 57 F.3d 1573,
1579 (Fed. Cir. 1995) (“The person of ordinary skill in the art is a
hypothetical person who is presumed to know the relevant prior art”). See
also Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he
absence of specific findings on the level of skill in the art does not give rise
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to reversible error „where the prior art itself reflects an appropriate level and
a need for testimony is not shown.‟”)
Conclusion of Law
The evidence of record supports the Examiner‟s conclusion that
Padilla and Laitenberger render claim 28 obvious.
SUMMARY
In summary, we affirm the rejection of claim 28 under 35 U.S.C. §
103(a) as obvious over Padilla and Laitenberger. Pursuant to 37 C.F.R. §
41.37(c)(1), we also affirm the rejection of claims 29-33 and 35 as these
claims were not argued separately.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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