Ex Parte Bassoe

Patent Trial and Appeal Board

May 3, 2013

10884255 (P.T.A.B. May. 3, 2013)

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.
10/884,255 07/02/2004 Thomas Bassoe PA-5369-RFB 5380
9896 7590 05/06/2013
COOK GROUP PATENT OFFICE
P.O. BOX 2269
BLOOMINGTON, IN 47402
EXAMINER
TYSON, MELANIE RUANO
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
05/06/2013 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 THOMAS BASSOE
____________

Appeal 2011-001487
Application 10/884,255
Technology Center 3700
____________

Before DONALD E. ADAMS, FRANCISCO C. PRATS, and SHERIDAN
K. SNEDDEN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims 1, 8-13, 15, 18, 20,
and 25-28 (App. Br. 2; Reply Br. 1; Ans. 2). The Examiner entered
rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C.
§ 6(b).
We affirm.

1 The Real Party in Interest is Cook Incorporated (App. Br. 2).
Appeal 2011-001487
Application 10/884,255

2
STATEMENT OF THE CASE
The claims are directed to a medical device for use in a passageway of
a human or animal body. Claim 1 is representative and is reproduced in the
Claims Appendix of Appellant’s Brief.
Claims 1, 8-13, and 26-28 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Austin,2 Anderson,3 and Salmon.4
Claims 15 and 18 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over the combination of Austin, Anderson, Salmon, and
DiCaprio.5
Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Austin, Anderson, Salmon, Hull.6
Claim 25 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Austin, Anderson, Salmon, and Ruiz.7

ISSUE
Does the preponderance of evidence relied upon by Examiner support
a conclusion of obviousness?

2 Austin et al., US 6,945,994 B2, issued September 20, 2005.
3 Anderson et al., US 5,800,526, issued September 1, 1998.
4 Salmon et al., US 6,315,708 B1, issued November 13, 2001.
5 DiCaprio et al., US 2002/0116046, published August 22, 2002.
6 Hull et al., US 5,192,297, issued March 9, 1993.
7 Ruiz, US 6,120,534, issued September 19, 2000.
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FACTUAL FINDINGS (FF)
FF 1. Austin’s Figure 1A is reproduced below:

“FIG. 1[A] shows a schematic illustration of … [Austin’s] inventive stent”
(Austin, col. 3, ll. 59-60).
FF 2. In the alternative to the device illustrated in Austin’s FIG. 1A,
Austin’s “invention is also directed to a stent, such as that shown by way of
example in FIG. 1, having first and second ends which are not self-
expanding and one or more self-expanding segments therebetween” (Austin,
5, ll. 1-4 (emphasis added); Ans. 8-9; see also Austin, col. 2, ll. 1-3).
FF 3. Examiner finds that Austin suggests the subject matter of
Appellant’s claim 1 but for: (1) a “balloon catheter compris[ing] a balloon
arrangement having first and second balloons” and (2) “the characteristics of
the materials with respect to body temperature” (Ans. 4-5).
FF 4. Examiner relies on Anderson to make up for Austin’s failure to
suggest a balloon catheter comprising a balloon arrangement having first and
second balloons (id.).
FF 5. Anderson also suggests “a slidable outer sheath … extending over
the full length of the hybrid stent for constricting the hybrid stent in a
collapsed position” (id. at 4; see also id. at 9 (“Anderson was used to
provide the teaching for a slidable outer sheath for extending over a full
length of a stent for deployment”)).
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FF 6. Examiner relies on Salmon to suggest the use of shape-memory alloy
materials in stent construction, wherein the transition temperature for (1)
balloon expandable stent portions are higher than body temperature and (2)
self-expandable stent portions are below body temperature “so that they
expand when placed into a human body (thus exert[ing] continual radially
outward force against the outer sheath when in the collapsed position until
the sheath is removed and they are able to assume an expanded
configuration…)” (id. at 5-6).
FF 7. In a preferred embodiment of Austin’s invention the “balloon
expansion of the stent is the controlling mechanism for initial expansion of
the stent” (Austin, col. 7, ll. 52-64).
FF 8. Examiner finds that the combination of Austin, Anderson, and
Salmon fails to suggest “forming first and second balloons from a polymer
or nylon material” and relies on Dicaprio to make up for this deficiency in
the combination of Austin, Anderson, and Salmon (Ans. 6-7).
FF 9. Examiner finds that the combination of Austin, Anderson, and
Salmon fails to suggest “forming the sheath from a polytetrafluoroethylene
material” and relies on Hull to make up for this deficiency in the
combination of Austin, Anderson, and Salmon (id. at 7).
FF 10. Examiner finds that the combination of Austin, Anderson, and
Salmon fails to suggest “independent first and second inflation lumens,
wherein the first inflation lumen is in fluid communication with the first
balloon and the second inflation lumen is in fluid communication with the
second balloon” and relies on Ruiz to make up for this deficiency in the
combination of Austin, Anderson, and Salmon (id. at 7-8).
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ANALYSIS
Based on the combination of Austin, Anderson, and Salmon,
Examiner concludes that, at the time Appellant’s invention was made, it
would have been prima facie obvious to (1) substitute Anderson’s dual
balloon catheter and slidable sheath arrangement for the single balloon
catheter and slidable sheath arrangement described in Austin to obtain “a …
system for effectively delivering and deploying a hybrid stent” and (2)
further modify the device suggested by Austin and Anderson to make use of
the stent materials suggested by Salmon (Ans. 4-6).
Appellant contends that Austin fails to suggest a stent having first and
second ends which are not self-expanding and a self-expanding segment
therebetween (App. Br. 5-6; Reply Br. 2-3). We are not persuaded (see FF
2). We are not persuaded by Appellant’s contention that Austin’s express
statement that Austin’s “invention is also directed to a stent, such as that
shown by way of example in FIG. 1, having first and second ends which are
not self-expanding and one or more self-expanding segments therebetween”
“is no more than a vague, unclear statement that the Examiner has
improperly applied hindsight reasoning to” (see FF 2; Cf. Reply Br. 2).
Appellant fails to identify a legal basis that would require Austin to
illustrate every embodiment disclosed therein; therefore, we are not
persuaded by Appellant’s contention that “there are no figures in Austin that
show the hybrid stent claimed by Applicant” (Reply Br. 2).
We are not persuaded by Appellant’s contention that Austin fails to
suggest “a self-expanding ‘middle part extending across the midsection of
the hybrid stent from one of the ends parts to another of the end parts” (id.;
App. Br. 7; Cf. FF 1-2).
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A reference is not limited to its preferred embodiments, therefore, we
are not persuaded by Appellant’s contention that Austin is limited to a stent
“arranged such that the balloon expansion of the stent is the controlling
mechanism for initial expansion of the stent” (see App. Br. 6; Reply Br. 3;
Cf. FF 7).
We are not persuaded by Appellant’s contention that Austin
“appear[s] to require … a full length balloon to expand the stent and that a
full-length sheath may not be needed,” which fails to account for Austin’s
non-preferred embodiments or the combination of Austin with Anderson and
Salmon (App. Br. 6-7; Cf. FF 1-6).
We recognize, but are not persuaded by Appellant’s contentions
regarding Salmon, which fail to account for the combination of Salmon with
Austin and Anderson (App. Br. 8; Cf. FF 1-6).
We recognize, but are not persuaded by Appellant’s contention that
Examiner “failed to provide a sufficient reason for why one of ordinary skill
in the art would combine Anderson with Austin” (Reply Br. 3-4).
Notwithstanding Appellant’s contention to the contrary, we find no error in
Examiner’s reasoning that “it would have been prima facie obvious to
substitute Anderson’s dual balloon catheter and slidable sheath arrangement
for the single balloon catheter and slidable sheath arrangement described in
Austin to obtain “a … system for effectively delivering and deploying a
hybrid stent” (Ans. 4-5).
If a person of ordinary skill can implement a predictable
variation, § 103 likely bars its patentability. For the same
reason, if a technique has been used to improve one device, and
a person of ordinary skill in the art would recognize that it
would improve similar devices in the same way, using the
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technique is obvious unless its actual application is beyond his
or her skill.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007).
Having found no deficiency in the combination of Austin, Anderson,
and Salmon, we are not persuaded by Appellant’s contention that DiCaprio,
Hull, or Ruiz fail to make up for the deficiency in the combination of Austin,
Anderson, and Salmon (App. Br. 9-10).
CONCLUSION OF LAW
The preponderance of evidence relied upon by Examiner supports a
conclusion of obviousness.
The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Austin, Anderson, and Salmon is affirmed. Claims
8-13 and 26-28 are not separately argued and fall with claim 1.
The rejection of claim 15 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Austin, Anderson, Salmon, and DiCaprio is
affirmed. Claim 18 is not separately argued and falls with claim 1.
The rejection of claim 20 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Austin, Anderson, Salmon, and Hull is affirmed.
The rejection of claim 25 under 35 U.S.C. § 103(a) as unpatentable
over the combination of Austin, Anderson, Salmon, and Ruiz is affirmed.
TIME PERIOD FOR RESPONSE
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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