Ex Parte ROEDER et al

Patent Trial and Appeal Board

Mar 23, 2016

12250957 (P.T.A.B. Mar. 23, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/250,957
48003 7590
EGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
10/14/2008
03/23/2016
FIRST NAMED INVENTOR
Blayne A. ROEDER
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.
8627-2111 4737
EXAMINER
DANG, ANH TIEU
ART UNIT PAPER NUMBER
3731
MAILDATE DELIVERY MODE
03/23/2016 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 BLAYNE A. ROEDER, ALAN R. LEEWOOD, and
DAVID D. GREWE
Appeal2013-006308
Application 12/250,957
Technology Center 3700
Before MICHELLE R. OSINSKI, JILL D. HILL, and
MICHAEL L. WOODS, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Blayne A. Roeder et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner's decision rejecting claims 1, 5-9, 15, 17, and 21-26. 1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
CLAIMED SUBJECT MATTER
1 Claims 2--4, 10-14, 16, and 18-20 have been canceled. Appeal Br. 16-19.
Appeal2013-006308
Application 12/250,957
Independent claims 1 and 15 are pending. Independent claim 1,
reproduced below, illustrates the claimed subject matter with key limitations
italicized.
1. A self-expanding stent configured to treat a
peripheral vessel, comprising:
a radially self-expanding tubular structure comprising a
first end, a second end, and a primary strut arrangement
extending over at least 90% of a length thereof from the first
end to the second end, the length of the radially self-expanding
tubular structure being at least about 5 0 mm, the primary strut
arrangement comprising:
a plurality of rows of first struts, the first struts being
interconnected within each row in a sinusoidal arrangement
about a circumference of the tubular structure, wherein crests
and troughs in the sinusoidal arrangement comprise connection
points of the first struts, the sinusoidal arrangements of the rows
being in phase with each other; and
a plurality of longitudinal struts connecting neighboring
rows of first struts at the connection points, wherein in each
row four circuniferentially adjacent first struts are disposed
betl'Veen ei'el}' tl'VO longititdinal stritts joined to the roi,v, one of
the two longitudinal struts extending in a direction of the first
end to a first neighboring row and the other of the two
longitudinal struts extending in a direction of the second end to
a second neighboring row,
a secondary strut arrangement including one row of
second struts disposed adjacent to the primary strut
arrangement at the first end of the tubular structure, the second
struts being interconnected within the row in a sinusoidal
arrangement about the circumference of the tubular structure,
wherein crests and troughs in the sinusoidal arrangement
comprise connection points of the second struts, and wherein
the sinusoidal arrangement of the row of second struts is in
phase with the sinusoidal arrangements of the rows of first
struts of the primary strut arrangement, wherein the longitudinal
struts at an end of the primary strut arrangement and extending
in a direction of the first end of the tubular structure are joined
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Application 12/250,957
to the row of second struts at the troughs, the troughs in the row
being closer to the first end than the crests in the row, eight
circuniferentially adjacent second struts being disposed
between every two longitudinal struts joined to the row of
second struts, thereby connecting the primary strut arrangement
with the secondary strut arrangement;
a tertiary strut arrangement including at least one row of
third struts disposed adjacent to the primary strut arrangement
at the second end of the tubular structure, wherein the tertiary
strut arrangement comprises one row of third struts, the third
struts being interconnected within the row in a sinusoidal
arrangement about the circumference of the tubular structure,
wherein crests and troughs in the sinusoidal arrangement
comprise connection points of the third struts, wherein the
longitudinal struts disposed at an end of the primary strut
arrangement and extending in a direction of the second end of
the tubular structure are joined to the row of third struts at the
crests, the crests in the row of third struts being closer to the
second end than the troughs in the row, wherein eight
circuniferentially adjacent third struts are disposed between
every two longitudinal struts joined to the row, the tertiary strut
arrangement thereby being connected with the primary strut
arrangement, and further wherein the sinusoidal arrangement of
the row of third struts is 180 degrees out of phase with the
sinusoidal arrangements of the rows of first struts of the
primary strut arrangement.
Appeal Br. 14--15.
REJECTIONS
I. Claims 1, 5, 6, 8, and 9 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over Gomez (US 2006/0052860 Al, pub. March 9, 2006),
Cheng (US 2004/0044400 Al, pub. March 4, 2004), Rabkin (US
2003/0176914 Al, pub. Sept. 18, 2003), and Oepen (US 2006/0235505 Al,
pub. Oct. 19, 2006). Final Act 4.
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Application 12/250,957
II. Claims 7 and 17 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Gomez, Cheng, Rabkin, Oepen, and Vietmeier (US
2005/0172471 Al, pub. Aug. 11, 2005). Final Act. 9.
III. Claims 15, 21, 22, and 24--26 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Gomez, Cheng, and Oepen. Final Act. 10.
IV. Claim 23 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Gomez, Cheng, Oepen, and Vietmeier. Final Act. 15.
OPINION
Rejection I
Appellants argue claims 1, 5, 6, 8, and 9 as a group. Appeal Br. 7-12.
We select independent claim 1 as representative. See 37 C.F.R.
§ 41.37(c)(l)(iv)(2015). Claims 5, 6, 8, and 9 stand or fall with claim 1.
Regarding independent claim 1, the Examiner finds that Gomez
discloses a radially self-expandable tubular stent with a primary strut
arrangement extending from its proximal end to its distal end, each row of
struts comprising four circumferentially adjacent struts between two
longitudinal struts 7 6. Final Act. 4. The Examiner finds that Gomez does
not disclose four circumferentially adjacent struts between every two
longitudinal struts 7 6, but finds that Cheng discloses this limitation, and that
it would have been obvious to substitute Cheng's arrangement of four
circumferentially adjacent struts between every longitudinal strut 17,
because it is known that varying the number of undulations between links in
stent arrangements can "increase longitudinal flexibility along the length of
the stent for navigation of the stent assembly through the body lumen and
develop the desired vulnerable plaque coverage." Final Act. 4--5 (citing
Cheng i-f 21 ("the number, shape and location of the links can be varied in
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Application 12/250,957
order to develop the desired vulnerable plaque coverage and longitudinal
flexibility")).
The Examiner next finds that the combination of Gomez and Cheng
does not disclose a secondary strut arrangement or a tertiary strut
arrangement having eight circumferentially adjacent second struts disposed
between every two longitudinal struts joined to the row of second struts, to
connect the primary strut arrangement with the secondary strut arrangement.
Final Act. 5---6. The Examiner concludes, however, that it would have been
obvious to remove certain longitudinal struts from the combination of
Gomez and Cheng to "allow navigation of the stent through the body lumen"
and because "it is known in the art to vary the number of links between
undulations to increase longitudinal flexibility along the length of the stent
for navigation of the stent assembly through the body lumen and develop the
desired vulnerable plaque coverage." Final Act. 6-7 (citing Cheng i-f 21 ("the
number, shape and location of the links can be varied in order to develop the
desired vulnerable plaque coverage and longitudinal flexibility")).
The Examiner lastly finds that Oepen discloses a stent with a length of
the tubular structure being "at least about 50 mm," and that one skilled in the
art would understand that stent length can be varied based on the intended
application or indication. Final Act. 7-8 (citing Oepen i-f 15 8 ("[A] stent can
be provided with a length ranging from about 5 mm to about 200 mm.
Variations of these dimensions will be understood in the art based upon the
intended application or indication.")).
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SF'A and Self-Expanding
Appellants first argue that Cheng discloses a coronary stent, not a
peripheral stent as claimed. Appeal Br. 8. According to Appellants,
although Cheng mentions self-expanding stents, Cheng is merely suggesting
that a self-expanding stent could be used in a coronary artery, not that its
stent could be used in a peripheral artery. Id.
The Examiner responds that "configured to treat a peripheral vessel"
is an intended use of the claimed invention, and is not given weight because
it does not result in a structural difference between the claimed invention
and the prior art. Appeal Br. 3; see also Ans. 3. The Examiner contends
that if the prior art is capable of performing the intended use, then it meets
the claim. Ans. 3.
The Examiner further finds that Gomez and Cheng are capable of
performing the intended use, because both references disclose that their
stents can be used in peripheral vessels. Final Act. 3 (citing Gomez i-f 95 ("it
will be apparent to those skilled in the art that the stent can be used in other
body lumens") and Cheng i-f 83 ("Since the stents of the present invention
have the novel feature of enhanced longitudinal flexibility due to their
angulated undulations, they are particularly well suited for implantation in
almost any vessel where such devices are used.")). The Examiner further
notes that the stents of Gomez and Cheng can be self-expanding. Ans. 3--4
( citing Gomez i-f 5 ("The stent typically is mounted ... in a catheter without
a balloon if it is self-expanding."); Cheng claims 23, 3 5 ("the stent is self-
expanding") ). The Examiner contends that, since both Gomez and Cheng
teach that the disclosed stent structures can be used in all body vessels and
can be self-expanding, the references suggest modifying the disclosed stent
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structures to be self-expanding stents used in peripheral vessels. Ans. 4--5.
We discern no errors in the Examiner's finding regarding the disclosures of
Cheng and Gomez.
Appellants next argue that, although Cheng and Gomez disclose using
their stents in various vessels, such disclosure is vague and "fall[ s] far short
of guiding one of ordinary skill in the art to [Appellants'] claimed
invention." Appeal Br. 11. Similarly, Appellants argue that a simple
teaching that the "stents of Gomez and Cheng could be used elsewhere in the
body" fails to suggest that Gomez, Cheng and Oepen could be combined to
achieve a self-expanding stent with the claimed stent structure and length.
Id. Lacking an explanation for why the Examiner's proffered reasoning
lacks a rational underpinning, we are not persuaded by this argument.
Regarding the Examiner's allegation of intended use, Appellants reply
that they are not merely using a known stent for a different purpose, and that
they have explained the structural differences that "define [their] claimed
stent as being a stent that is suitable for treating the SF A [superficial femoral
artery]." Reply Br. 2 (citing Appeal Br. 8, 13). Appellants, however, do not
provide us with a detailed explanation regarding the structural differences
that define a stent as a coronary stent, and have further not persuaded us that
Cheng's preferred embodiment being a coronary stent leads to any errors in
the Examiner's findings and conclusions. As established above, Cheng
contemplated use of a self-expanding stent in "almost any vessel." The
same is true of Gomez.
50mmLength
Appellants argue, secondly, that Cheng's coronary stent would be
about 15mm long, not 50mm or longer as claimed.
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The Examiner responds that the Appellants cannot show non-
obviousness by attacking references individually when the rejection is based
on a combination of references, and therefore the fact that neither Gomez
nor Cheng disclose a 50mm stent length is unpersuasive because Oepen was
relied upon to teach the claimed length. Ans. 5. The Examiner reasons that
because Gomez and Cheng state that their stents can be used in a number of
vessels and one skilled in the art would understand that stent length varies
based on the intended application or indication, it would have been obvious
to one skilled in the art to modify the stent to have a length of 50mm as in
Oepen "to accommodate the size and rigidity of larger blood vessels when
the device is used in other vessels in the body than the coronary arteries."
Id. at 5---6 (citing Cheng i-f 83, Gomez i-f 95).
We agree with the Examiner that the disclosures of Gomez and Cheng
are not limited to the smaller coronary stents of their preferred embodiments,
and that one skilled in the art would understand that the size of the stent
would vary with its intended application.
Appellants then argue that, although Oepen discloses a stent length
range including the claimed 50mm length, Oepen's stent "has nothing to do
with the claimed stent structure" and therefore cannot suggest modifying the
combined stent of Cheng and Gomez to the claimed length. Appeal Br. 11.
Appellants also argue that Gomez "has almost nothing to do with the
claimed invention" because Gomez is a generic stent and does not disclose
( 1) four first struts between every two longitudinal struts, (2) a primary strut
arrangement extending over at least 90% of the length of the stent, or (3) the
stent being at least 50 mm long. Reply Br. 2.
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Application 12/250,957
The Examiner, considering this to be a non-analogous art argument,
responds that "Gomez, Cheng, Oepen and Rabkin are all in the same field of
endeavor, namely stents." Ans. 6. Appellants do not refute this assertion,
and we discern no error in the Examiner's determination that the references
are in the same field of endeavor.
Regarding the Examiner's reason for combining Oepen's 50mm
length with Gomez and Cheng, Appellants argue that the reasoning is
"merely a broad conclusion that anything in the stent art-structure, size,
length, use-is interchangeable" and thus is too generic. Reply Br. 3--4.
Appellants, however, do not explain how the Examiner's conclusion, even if
broad, is incorrect or lacks a rational underpinning. We therefore are not
persuaded of any error.
At Least 90%
Third, Appellants argue that the commonly-owned Cheng and Gomez
stents developed in a manner different than (opposite from) the Examiner's
proposed modification, because Gomez's stent was "altered by Cheng by
introducing a special strut arrangement in the center of the stent." Appeal
Br. 10, 12 (citation omitted). According to Appellants, this development
shows that one skilled in the art would not have considered the teachings of
Cheng and Gomez to suggest increasing the size of Cheng's primary strut
arrangement to at least 90% of the stent length, tending to make the claimed
stent arrangement non-obvious, rather than obvious. Id. Appellants argue
that, therefore, the Examiner's reasoning is based on hindsight. Id. at 10-11.
Appellants continue that the Examiner's proposed combination of
references merely proves that all of the individual claim elements can be
found in the prior art. Reply Br. 3. According to Appellants, the
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Application 12/250,957
Examiner's cited motivation for combining Gomez and Cheng is vague and
"fails to provide specific reasons why one of ordinary skill in the art would
have taken Cheng's center section and extended it along at least 90% of the
length of Gomez's stent." Id.
Development of the prior art down one avenue does not necessarily
render other avenues of development non-obvious. Appellants do not allege
that the Examiner's reasoning is incorrect or lacks a rational underpinning,
and we are thus not persuaded of Examiner error.
Re} ections II-IV
Appellants do not present any separate arguments for the patentability
of the claims in these rejections. See Appeal Br. 12-14. Accordingly, we
sustain these rejections for the same reasons that we sustain the rejection of
claim 1.
DECISION
We AFFIRM the rejection of claims 1, 5, 6, 8, and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Gomez, Cheng, Rabkin, and Oepen.
We AFFIRM the rejection of claims 7 and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Gomez, Cheng, Rabkin, Oepen, and
Vietmeier.
We AFFIRM the rejection of claims 15, 21, 22, and 24--26 under 35
U.S.C. § 103(a) as unpatentable over Gomez, Cheng, and Oepen.
We AFFIRM the rejection of claim 23 under 35 U.S.C. § 103(a) as
unpatentable over Gomez, Cheng, Oepen, and Vietmeier.
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Application 12/250,957
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED
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