Ex Parte Krivoruchko et alDownload PDFPatent Trial and Appeal BoardJan 14, 201311624343 (P.T.A.B. Jan. 14, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte MICHAEL KRIVORUCHKO and JOSEPH LESSAR __________ Appeal 2012-000877 Application 11/624,343 Technology Center 3700 __________ 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. Appeal 2012-000877 Application 11/624,343 2 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abut the valley so as to space the non-deformed peak portions from the valley. 1 Claims 1, 4-10, 12-16, and 21-27 are withdrawn (see App.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). Appeal 2012-000877 Application 11/624,343 3 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. Appeal 2012-000877 Application 11/624,343 4 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). Appeal 2012-000877 Application 11/624,343 5 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). Appeal 2012-000877 Application 11/624,343 6 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). Appeal 2012-000877 Application 11/624,343 7 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.) Appeal 2012-000877 Application 11/624,343 8 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). Appeal 2012-000877 Application 11/624,343 9 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) Appeal 2012-000877 Application 11/624,343 10 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 Appeal 2012-000877 Application 11/624,343 11 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 Appeal 2012-000877 Application 11/624,343 12 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 cdc Copy with citationCopy as parenthetical citation