Ex Parte Sheldon et al

Patent Trial and Appeal Board

May 19, 2017

11876666 (P.T.A.B. May. 19, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
11/876,666 10/22/2007 Jeffery Sheldon IDEV.011A1 6635
20995 7590 05/23/2017
KNOBBE MARTENS OLSON & BEAR LLP
2040 MAIN STREET
FOURTEENTH FLOOR
IRVINE, CA 92614
EXAMINER
PELLEGRINO, BRIAN E
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
05/23/2017 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):
jayna.cartee@knobbe.com
efiling @ knobbe. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEFFERY SHELDON, RICHARD BOOTH, and KEN BUECHE
Appeal 2015-004041
Application 11/876,666
Technology Center 3700
Before JAMES P. CALVE, LISA M. GUIJT, and BRADLEY B. BAYAT,
Administrative Patent Judges.
GUIJT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants1 seek our review under 35 U.S.C. § 134 of the Examiner’s
decision2 rejecting claims 52, 54, 55, 57—59, 61—65, 67—70, 106—113, 115,
and 120.3 We have jurisdiction under 35 U.S.C. § 6(b). An oral hearing was
conducted on May 15, 2017.
1 Appellants identify the real party in interest as IDEV Technologies, Inc., a
wholly-owned subsidiary of Abbott Vascular, a division of Abbott
Laboratories, Inc. Appeal Br. 4.
2 Appeal is taken from the Final Office Action dated March, 11, 2014
(“Final Act.”), as supplemented by the Advisory Action dated May 30, 2014
(“Adv. Act.”).
3 Claims 1-51, 53, 56, 72-79, 81-85, 87-90, 92-105, 114, 116-119, and
121 have been canceled, and claims 60, 66, 71, 80, 86, and 91 have been
withdrawn. See Amendments dated Dec. 17, 2010; June 17, 2011; July 5,
Appeal 2015-004041
Application 11/876,666
We REVERSE.
CLAIMED SUBJECT MATTER
Claims 52 and 106 are the independent claims on appeal. Claim 52,
reproduced below, is illustrative of the claimed subject matter on appeal.
52. A woven, self-expanding stent device configured
for insertion into an anatomical structure, the device comprising:
a plurality of strands woven together to form a stent body,
each of said plurality of strands having two strand end portions;
a coupling structure coupled to a pair of strand end
portions that are aligned end-to-end, the pair of strand end
portions comprising strand end portions from a same strand or
two different strands;
wherein the pair of strand end portions includes nickel and
titanium, and the coupling structure is not a strand of the device,
and
wherein the coupling structure is secured to a first strand
end portion of the pair of strand end portions by a first weld that
forms a first welded region, the coupling structure is secured to
a second strand end portion of the pair of strand end portions by
a second weld that forms a second welded region, and the first
and second welded regions are not directly connected to each
other along a longitudinal axis of the coupling structure by
another welded region.
2012; Nov. 5, 2012; Oct. 14, 2013; May 12, 2014.
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Application 11/876,666
REJECTIONS4
I. Claims 52, 54, 55, 57—59, 61—63, and 115 stand rejected under
35 U.S.C. § 103(a) as unpatentable over McCullagh (US 7,402,170 B2; iss.
July 22, 2008) and Gianturco (CA 2,007,648; iss. Apr. 4, 2000).
II. Claims 64 and 67—69 stand rejected under 35 U.S.C. § 103(a)
as unpatentable over McCullagh, Gianturco, and Thistle (US 7,695,506 B2;
iss. Apr. 13, 2010).
III. Claims 65 and 70 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over McCullagh, Gianturco, Thistle, and Callol (US 6,174,329
Bl; iss. Jan. 16, 2001).
IV. Claims 52, 54, 55, 57, 61-65, 67-70, 106, 107, 109-112, and
120 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Thistle and
Leonhardt (US 2002/0029075 Al; pub. May 7, 2002).
V. Claim 113 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thistle, Leonhardt, and Shank (US 6,231,581 Bl; iss.
May 15,2001).
VI. Claims 59 and 108 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Thistle, Leonhardt, and Norton (US 2006/0116752 Al;
pub. June 1, 2006).
4 To the extent the Examiner has included cancelled or withdrawn claims in
the statements of the rejections in the Final Office Action, we have omitted
such claims as typographical errors. Further, the Examiner’s rejection of
cancelled claims 92 and 97 on the ground of nonstatutory double patenting is
moot. Final Act. 11—13.
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Application 11/876,666
ANALYSIS
Rejection I
Regarding independent claim 52, the Examiner finds, inter alia, that
McCullagh’s device comprises a plurality of different strands, i.e., adjacent
portions 14, 16 of stent 10, which inherently have two strand end portions.
Final Act. 3. The Examiner also finds that McCullagh’s securement member
12, which is welded to strand portions 14, 16, is a coupling structure, as
claimed. Id. (citing McCullough 7:24—26). The Examiner determines that
McCullagh does not explicitly disclose a coupling structure that “is welded
at [strand] end portions or aligned end to end,” and relies on Gianturco for
teaching strand end portions welded within sleeve 12. Id. at 4. (citing
Gianturco 6:5—8, Fig. 5). The Examiner reasons that it would have been
obvious to secure the inherent strand end portions of McCullagh’s stent
within a coupling structure, as taught by Gianturco, “such that it provides a
continuous structure.” Id.
Appellants argue, inter alia, that the Examiner “fails to point to a
combination of teachings in McCullagh and Gianturco that would result in
strand portion ends aligned end-to-end in a coupling structure.” Appeal Br.
11 (emphasis added); see also Reply Br. 17. The Examiner responds that
“Gianturco teaches alignment of strand end portions end-to-end joined by
coupling 12’.” Ans. 10 (citing Gianturco, Fig. 5).
Appellants’ Specification distinguishes between strand end portions
that are “substantially aligned with each other (end-to-end)” and strand end
portions that are “positioned in side-by-side relationship (which may be
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Application 11/876,666
characterized as overlapping).” Spec. 3:23—4:2; see also id. at 16:3—6 (“FIG.
10A shows coupling structure 20 secured to strand end portions 12 and 14 in
a butt joint or butt configuration; as a result of this arrangement, strand end
portions 12 and 14 are substantially aligned with each other.”), 16:16—18
(“FIG. 10B shows coupling structure 20 secured to strand end portions 12
and 14 in a lap joint or lap configuration; this configuration also may be
characterized as overlapping.”). Figures 10A and 10B are reproduced
below.
Figure 10A “depicts one coupling structure secured to two strand end
portions that are substantially aligned,” and Figure 10B “depicts one
coupling structure secured to two strand end portions that overlap with each
other.” Spec. 9:15—18.
Gianturco’s Figure 5 is reproduced below.
22 24
FIG, IGA
12 14
FIG. 1GB
,10'
Fig.5
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Application 11/876,666
Figure 5 of Gianturco depicts a side view of two stents 10’ and 10”, wherein
(i) each stent is made from a single length of wire 11 ’ and formed into a zig­
zag configuration; and (ii) each stent is connected to the other by eyes 20’
and 20” at the ends of each stent. Gianturco 5:3—4; 6:32—'7:5. Gianturco
discloses that “[t]he free ends of the length of wire 11’ are joined by way of
the sleeve 12’” and that “a sleeve 12” is used to connect the ends of the
length of wire 11 ’[’].” Id. at 7:7—8, 14—15. However, Gianturco stops short
of depicting or explaining how the end portions of wires 11’, 11” are
configured within sleeves 12’, 12”, and therefore, a preponderance of
evidence fails to support the Examiner’s finding that Gianturco depicts that
such end portions of the wires are “aligned end-to-end,” as required by claim
52.
Accordingly, we cannot sustain the Examiner’s rejection of
independent claim 52 rejected under 35 U.S.C. § 103(a) as unpatentable over
McCullagh and Gianturco, and claims 54, 55, 57—59, 61—63, and 115
depending therefrom.
Rejections II and III
Claims 64, 65, and 67—70 depend from independent claim 52. The
Examiner’s reliance on Thistle and/or Callol does not cure the deficiencies
in the Examiner’s rejection of claim 52 under 35 U.S.C. § 103(a) as
unpatentable over McCullagh and Gianturco as discussed supra.
Accordingly, for the reasons set forth supra, we cannot sustain the
Examiner’s rejection of claims 64, 65, and 67—70.
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Rejection IV
Independent claims 52 and 106 require, in relevant part, a pair of
strand end portions that are aligned end-to-end, and claim 106 further
requires tubular couplings structure, wherein each of the tubular coupling
structures includes a passageway having a diameter sized to receive one
strand. See Appeal Br. 36, 38 (Claims App.).
Regarding independent claims 52 and 106, the Examiner finds, inter
alia, that Thistle shows a woven stent comprising a plurality of strands 18
having first and second strand end portions. Final Act. 7 (citing Thistle, Fig.
1). The Examiner also finds that Thistle’s hollow member 16 corresponds to
the claimed coupling structures. Id. The Examiner determines that Thistle
does not disclose the strand end portions of strands 18 aligned end-to-end,
and relies on Leonhardt for teaching that strand end portions of a stent can
be aligned end-to-end. Id. at 7—8 (citing Leonhardt Fig. 2D). The Examiner
reasons that it would have been obvious
to utilize an alternative arrangement to couple the end portions
of strands and have the second end portion be placed through an
opposing side of the coupling structure to form an end to end
coupling of the strands as taught by Leonhardt with the stent of
Thistle et al. such that the end portions are less likely to withdraw
from the coupling due to the end to end relationship and since the
one wire strand extends up and then bends back towards the other
end to be coupled. To simplify, it would only involve routine
skill in the art to alter the hollow tube coupling structure in
Thistle’s stent . . . and utilize a smaller or shorter coupling
structure taught by Leonhardt and have a second strand be
welded thereto and bent back to join with another strand coupling
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Application 11/876,666
at a different location unless the same strand is woven back such
that it is its second end placed in the coupling structure.
Id. at 8.
Appellants argue, inter alia, that the Examiner has not provided
support as to why the end-to-end relationship proposed by the Examiner, as
compared to Thistle’s side-by-side relationship, causes strand end portions
to be less likely to withdraw. See Appeal Br. 22. Appellants also argue that
the Examiner has failed to provide sufficient reasoning for Examiner’s
proposed modification to bend back, truncate, align, and weld Thistle’s
strand end portions, and that the Examiner’s reasoning is “based solely on
impermissible hindsight reconstruction,” in view of the Specification. Id. at
24.
Regarding independent claim 52, the Examiner responds that
the modification could be made such that the wire strands extend
through a coupling structure as taught by Leonhardt and have one
strand end portion join another strand end portion in the coupling
structure[s] as seen in Fig. 2D [of Leonhardt] and be welded
therein. . . . This arrangement of wire ends clearly could be an
obvious substitution for the curved bent ends of the coupling
structure in Thistle and thus alternatively utilizing the coupling
structure of Leonhardt would then provide the same materials of
the woven wire stent throughout or along the length of the
structure and give a consistent radial expansion. It is not
necessarily evident that Thistle’s unmodified structure does such
an expansion utilizing the bent curved coupling structures around
the end circumferences to retain the wire ends since it is made of
different materials.
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Ans. 16—17 (emphasis added). Appellants reply that “the
[Examiner’s] assertion that merely providing the same material would
give consistent radial expansion is speculative,” and therefore, the
Examiner’s “fails to establish that a skilled artisan would be motivated
to [modify Thistle] in view of Leonhardt” as determined by the
Examiner. Reply Br. 5.
We agree that the Examiner’s rationale for modifying hollow
member 16 and strand end portions of wires 18, as depicted in Figure
5 of Thistle, for example, at 20B, to be a metal band 38 enclosing a
solid strand and strand end portions aligned end-to-end, as disclosed
in Leonhardt, is conclusory, in that the Examiner fails to provide
sufficient support for determining that such a modification results in
strand end portions that are less likely to withdraw from the coupling
and/or a more consistent radial expansion of the stent, or that such a
modification is simply an obvious substitution. “[Rejections on
obviousness grounds cannot be sustained by mere conclusory
statements; instead, there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of
obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited
with approval in KSRInt’l Co. v. Teleflex, Inc., 550 U.S. 398, 414
(2007)). Moreover, rejections based on obviousness must rest on a
factual basis; in making such a rejection, the Examiner has the initial
burden of supplying the requisite factual basis and may not, because
of doubts that the invention is patentable, resort to speculation,
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Application 11/876,666
unfounded assumptions, or hindsight reconstruction to supply
deficiencies in the factual basis. See In re Warner, 379 F.2d 1011,
1017 (CCPA 1967). Here, we are persuaded by Appellants’ argument
that the Examiner has improperly relied on hindsight reasoning.
Regarding independent claim 106, the Examiner responds that the
Examiner’s proposed modification for claim 106 is distinguishable from the
Examiner’s proposed modification for claim 52 supra, and involves
modifying Thistle “such that the hollow tube coupling structures not have a
bend between two straight portions, but basically have two side by side tubes
for providing passageways for wire strands such that they can be retained
together and secure end portions within a coupling structures as taught by
Leonhardt.” Ans. 20. Appellants reply that
[t]o the extent the Examiner’s Answer suggests that a skilled
artisan would be motivated to modify the hollow member of
Thistle in view of Leonhardt, the skilled artisan would be
motivated to create a coupling structure having a diameter sized
to receive two strands such that the strand ends could be joined
to an uninterrupted strand portion.
Reply Br. 24 (citing Leonhardt, Fig. 2D).
Again, we agree with Appellants that the Examiner’s proposed
modification is conclusory and improperly based on hindsight reasoning.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 52 and 106, and claims 54, 55, 57, 61—65, 67—70, 107,
109-112, and 120 depending therefrom.
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Rejections V and VI
The Examiner’s reliance on Shank and/or Norton does not cure the
deficiencies in the Examiner’s findings and reasoning with respect to Thistle
and Leonhardt as applied to claims 52 and 106. Therefore, we also do not
sustain the Examiner’s rejections of claims 59, 108, and 113.
DECISION
The Examiner’s decision to reject claims 52, 54, 55, 57—59, 61—63,
and 115 under 35 U.S.C. § 103(a) as unpatentable over McCullagh and
Gianturco is reversed.
The Examiner’s decision to reject claims 64 and 67—69 under 35
U.S.C. § 103(a) as unpatentable over McCullagh, Gianturco, and Thistle is
reversed.
The Examiner’s decision to reject claims 65 and 70 under 35 U.S.C.
§ 103(a) as unpatentable over McCullagh, Gianturco, Thistle, and Callol is
reversed.
The Examiner’s decision to reject claims 52, 54, 55, 57, 61—65, 67—
70, 106, 107, 109-112, and 120 under 35 U.S.C. § 103(a) as unpatentable
over Thistle and Leonhardt is reversed.
The Examiner’s decision to reject claims Claim 113 under 35 U.S.C.
§ 103(a) as unpatentable over Thistle, Leonhardt, and Shank is reversed.
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The Examiner’s decision to reject claims 59 and 108 under 35 U.S.C.
§ 103(a) as unpatentable over Thistle, Leonhardt, and Norton is reversed.
REVERSED
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