Ex Parte Case et al

Patent Trial and Appeal Board

Aug 18, 2017

13444238 (P.T.A.B. Aug. 18, 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.
13/444,238 04/11/2012 Brian C. Case 1000-471 4418
42715 7590 08/22/2017
Buchanan Van Tuinen LLC
P.O. Box 700
Perrysburg, OH 43552
EXAMINER
SCHALL, MATTHEW WAYNE
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
08/22/2017 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):
u spto @ ipbyb v .com
pair@ipbybv.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BRIAN C. CASE, JACOB A. FLAGLE,
MICHAEL L. GARRISON, ANDREW K. HOFF A, and
RAY LEONARD II
Appeal 2015-003649
Application 13/444,238
Technology Center 3700
Before PATRICK R. SCANLON, BEVERLY M. BUNTING, and
GORDON D. KINDER, Administrative Patent Judges.
SCANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Brian C. Case et al. (“Appellants”)1 seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision, as set forth in the Final Office Action,
dated February 28, 2014 (“Final Act.”), rejecting claims 38 and 39 under
35 U.S.C. § 103(a) as unpatentable over Dor (US 6,334,871 Bl, iss. Jan. 1,
2002) and Bailey (US 2001/0021872 Al, pub. Sept. 13, 2001). An oral
1 Appellants identify Cook Medical Technologies LLC as the real party in
interest. Appeal Br. 3.
Appeal 2015-003649
Application 13/444,238
hearing was conducted on June 13, 2017. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.
CLAIMED SUBJECT MATTER
Appellants’ claimed invention “relates to medical devices, more
particularly to intraluminal prosthes[e]s, such as valves, stents, and the like,
placed using external imaging methods.” Spec. 1,11. 2—3. Claim 38,
reproduced below, is the sole independent claim and is representative of the
claimed subject matter.
38. An expandable prosthesis placeable into a body lumen, the
expandable prosthesis comprising:
a support structure configured to engage the walls of the
body lumen, the support structure having a cross-sectional
profile that includes a first axis;
an artificial valve attached to the support structure and
comprising a pair of opposing leaflets that define an orifice, the
orifice including a first end and a second end located about the
first axis; and
a first radiopaque member located about the first end of
the orifice and a second radiopaque member located about the
second end of the orifice, each of the first radiopaque member
and the second radiopaque member configured to facilitate visual
identification of the rotational orientation of the first axis and the
orifice while the prosthesis is being imaged externally;
wherein the artificial valve opens and closes in response
to fluid flowing therethrough.
Appeal Br. 11, Claims App.
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Appeal 2015-003649
Application 13/444,238
ANALYSIS
In rejecting claims 38 and 39, the Examiner finds that “Dor discloses
in figure 7 a stent comprising a support structure (1) with apertures and
radiopaque markers (13) with larger end diameters within the apertures,” but
concedes that “Dor does not disclose a valve in the stent.” Final Act. 3. The
Examiner then finds that Bailey discloses a radiopaque stent having a valve
and concludes that it would have obvious to one of ordinary skill in the art to
provide the stent of Dor with a valve per the teaching of Bailey “in order to
treat a diseased valve.” Id.
Appellants argue that “Dor only describes the placement of a marker
having radiopaque qualities within an opening defined by a circumferential
wall of a stent,” and Bailey “lacks any mention of the required relative
positioning between first and second radiopaque members and an orifice
defined by a pair of opposing leaflets.” Appeal Br. 6.
In response, the Examiner states that “[t]he claim language simply
requires a radiopaque marker at each end of the device.” Ans. 2. It is not
clear, however, what is meant by the Examiner’s reference to “the device.”
Claim 38 recites an expandable prosthesis comprising a support structure, an
artificial valve, and two radiopaque members. Presumably, “the device”
refers to the expandable prosthesis, or perhaps the support structure or the
artificial valve. In any case, the Examiner’s statement is not accurate.
Claim 38 requires an artificial valve that comprises a pair of opposing
leaflets that define an orifice having first and second ends, and a radiopaque
member located at each end of the orifice. In other words, the claim
language requires a radiopaque member to be located at each end of an
orifice that is defined by a pair of opposing leaflets in an artificial valve.
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Appeal 2015-003649
Application 13/444,238
This claim language requires much more than merely a radiopaque marker at
each end of the device, regardless of whether “the device” refers to the
expandable prosthesis, the support structure, or the artificial valve.
Although relying on Bailey for disclosing a valve in a radiopaque
stent (Final Act. 3), the Examiner fails to identify where Bailey discloses an
artificial valve that comprises a pair of opposing leaflets that define an
orifice having first and second ends. More importantly, even assuming
arguendo that Bailey discloses such a valve, the Examiner does not explain
adequately why one of ordinary skill in the art, when modifying the stent of
Dor to include Bailey’s valve as proposed by the Examiner, would place a
radiopaque member at each end of the valve orifice. Dor discloses inserting
a radiopaque marker in opening 2 at each end or edge of stent structure 1 to
mark the ends of the stent. Dor, 3:1—10. Bailey discloses providing
radiopaque markers only on stent body member 12, rather than any valve
structure. Bailey | 55. Thus, the prior art relied on by the Examiner does
not teach or suggest positioning a radiopaque member at each end of an
artificial valve orifice, as the Examiner suggests.
Furthermore, the Examiner determines that the claimed first axis “can
be either longitudinal or transverse, or any other angle and will be included
in the cross-sectional profile.” Ans. 2. The problem with this reasoning,
however, is the Examiner fails to identify an axis of the Dor-Bailey
combination that purportedly corresponds to the first axis. The Examiner
also fails to explain adequately why one of ordinary skill in the art, when
making the proposed modification, would position the first and second ends
of the valve orifice about the first axis, as required by claim 38.
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Appeal 2015-003649
Application 13/444,238
For the above reasons, we do not sustain the rejection of claims 38
and 39 as unpatentable over Dor and Bailey.
DECISION
We reverse the decision of the Examiner rejecting claims 38 and 39.
REVERSED
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