Ex Parte Addonizio et alDownload PDFPatent Trial and Appeal BoardSep 29, 201612178883 (P.T.A.B. Sep. 29, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/178,883 07/24/2008 31292 7590 10/03/2016 CHRISTOPHER & WEISBERG, P.A. 200 EAST LAS OLAS BOULEVARD SUITE 2040 FORT LAUDERDALE, FL 33301 FIRST NAMED INVENTOR Scott J. ADDONIZIO 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. 1019-7CON3 7160 EXAMINER NELSON, CHRISTINE L ART UNIT PAPER NUMBER 3774 NOTIFICATION DATE DELIVERY MODE 10/03/2016 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): ptomail@cwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SCOTT J. ADDONIZIO, DAVID L. CAMP JR., GARY J. BECKER, and JOHN D. PAZIENZA Appeal2015-004146 Application 12/178,883 Technology Center 3700 Before JENNIFER D. BAHR, BRETT C. MARTIN, and LEE L. STEPINA, Administrative Patent Judges. MARTIN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-3 and 5-24. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal2015-004146 Application 12/178,883 CLAIMED SUBJECT MATTER The claims are directed to "stents having helical elements and to methods for manufacturing the stents of the present invention." Spec. i-f 2. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A stent defining a longitudinal axis, the stent comprising: a plurality of expandable helical segments, each expandable helical segment lying at a first angle with respect to the longitudinal axis and including a plurality of single substantially S-shaped portions and a plurality of substantially capital H-shaped segments in an alternating arrangement, wherein each substantially S-shaped portion comprises a linear segment and a curved segment, the linear segment lying at an angle equal to the first angle relative to the longitudinal axis; a plurality of circumferential elements having a repeating pattern, each circumferential element spanning between two H- shaped segments and having a different configuration than each substantially S-shaped portion; and a plurality of adjacent, non-helical cylindrical rings, each cylindrical ring compnsmg one or more of the circumferential elements connected to one or more of the substantially S-shaped portions. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Becker Thompson Thornton VonOepen Addonizio Addonizio Addonizio us 6,117,165 us 6,132,461 US 6,551,350 Bl US 6,602,285 Bl US 7,329,277 B2 US 7 ,942,922 B2 US 7 ,967 ,852 B2 2 Sept. 12, 2000 Oct. 17, 2000 Apr. 22, 2003 Aug. 5, 2003 Feb. 12,2008 May 17, 2011 June 28, 2011 Appeal2015-004146 Application 12/178,883 REJECTIONS Claims 1-3, 8-10, 14--16, and 18-24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen. Ans. 2. Claims 5 and 11 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen and Thornton. Ans. 5. Claims 6, 12, and 17 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen and Thompson. Ans. 6. Claims 5, 7, 11, and 13 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Von Oepen, Thompson, and Thornton. Id.; see also Ans. 9. Claims 1-3, 6, 8-10, 12, and 14--24 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Thompson and Von Oepen. Ans. 6. Claims 1-3 and 5-24 stand rejected on the ground of nonstatutory obviousness-type double patenting over claims 1-34 of Addonizio '277, claims 1-20 of Addonizio '922, and claims 1-20 of Addonizio '852, each in view of Becker. 1 OPINION The Appellants allege three defects in the Examiner's rejection over Von Oepen alone: 1) improper motivation, 2) no reasonable expectation of success, and 3) that all limitations are not taught in the prior art of record. See App. Br. 6. As the Examiner states, "[a]ll of Appellant's [sic] arguments 1 The Appellants provide no argument regarding these obviousness-type double patenting rejections. Accordingly, we summarily affirm them. 3 Appeal2015-004146 Application 12/178,883 boil down to the assertion that he 'has presented evidence that the shape and configuration of a stent is not only significant, but critical to the stents [sic] behavior and performance', referring to the declaration of Richard A. Hillstead." Ans. 10 (3d alteration is in original). As the Examiner correctly states, "[t ]he declaration remains completely silent as to any effect that a change in the angle of any of the stent' s segments would have on the functioning of the stent and so cannot serve as evidence that the change in the angles proposed in the Examiner's rejections would have an unpredictable result." Ans. 11. Dr. Hillstead makes only the general observation that, as stated by the Appellants, "geometry or design components of one stent cannot simply be interchanged with geometry or design components of another stent with a reasonable degree of predictability." App. Br. 8. The Appellants further restate Dr. Hillstead's opinion, "nor is there a general likelihood that the resulting combination will be successful." Id. None of this, however, specifically rebuts the proposed design choice presented to reject the claims. The Examiner states, [The Appellants have] not disclosed that the particular angle or the fact that that two angles are equal [to] each other provides an advantage, is used for a particular purpose, solves any stated problem, or has any effect whatsoever on the functioning of the stent. One of ordinary skill in the art ... would have expected Von Oepen' s stent, and [the Appellants'] invention, to perform equally well with either the relative angles for the helical segments and the linear segments shown by Van Oepen or the relative angles claimed because both relative angles would perform the fame function of providing structure, strength, and flexibility to the stent. 4 Appeal2015-004146 Application 12/178,883 Id. at 3. As already noted, Appellants do not present any specific technical reasoning or evidence, including in the Hillstead declaration, to rebut the Examiner's statements. Moreover, as the Examiner states, "the stent is a purely mechanical device, and the results of changes to the geometry would not be unpredictable, but rather would be governed by the rules of physics and would be a matter of 'dynamics."' Ans. 11. We also note that "a person of ordinary skill is also a person of ordinary creativity, not an automaton." KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Furthermore, the fact that judgment and mechanical skill may be required to arrive at a particular combination does not necessarily mean that particular combination constitutes a nonobvious invention. Graham v. John Deere Co. of Kansas City, 383 US 1, 10-12 (1966) (discussing Hotchkiss v. Greenwood, 52 (11 How.) 248 (1850)). While designing a stent may be a difficult process, presumably one of ordinary skill in this art is familiar with this difficult process and is capable of determining what effect, if any, changing of various angles may have and, thus can implement such changes with a reasonable expectation of success. The Examiner has proposed modifications via design choice, and other than to assert, generally, that modifications may present problems, the Appellants have provided no specific argument as to why the Examiner's proposed changes would actually result in any changes in stent performance, much less an unsuccessful stent. We do not agree that such general statements as those made by Dr. Hillstead amount to persuasive evidence that there would be no reasonable expectation of success for the proposed modifications. Rather, Dr. Hillstead' s comments merely acknowledge that skill is necessary 5 Appeal2015-004146 Application 12/178,883 in stent design, presumably skill that would be had by the hypothetical person of ordinary skill. Furthermore, we disagree that the Examiner has ignored the declaration testimony as asserted by the Appellants (Reply Br. 3), but merely has properly pointed out how and why the testimony is insufficient to overcome the rejection(s). Regarding the rejection of claims 1-3, 8-10, 14--16, and 18-24 as obvious over Thompson and Von Oepen, the Appellants do not allege any deficiencies in the teachings of Thompson nor to the combination with Von Oepen, but merely restate their arguments, which we have already rejected supra, as to why the Examiner's use of Von Oepen and design choice modifications are improper. App. Br. 10. Accordingly, for the same reasons as stated above, we sustain the Examiner's rejection. As stated by the Appellants, the "dependent claims are deemed to rise and fall with their respective independent claims," 1, 8, 14, and 18. App. Br. 11. Accordingly, we sustain the remaining rejections. DECISION The Examiner's rejections of claims 1-3 and 5-24 are affirmed. 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 6 Copy with citationCopy as parenthetical citation