Ex Parte Chuter et al

Patent Trial and Appeal Board

Aug 25, 2014

12338020 (P.T.A.B. Aug. 25, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/338,020 12/18/2008 Timothy A.M. Chuter 12730/424
(PA-6297-RFB)
4711
48003 7590 08/26/2014
BGL/Cook - Chicago
PO BOX 10395
CHICAGO, IL 60610
EXAMINER
MATTHEWS, WILLIAM H
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
08/26/2014 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 TIMOTHY A.M. CHUTER, WILLIAM K. DIERKING,
ALAN R. LEEWOOD, BLAYNE A. ROEDER
__________

Appeal 2012-003820
Application 12/338,020
Technology Center 3700
__________

Before ERIC B. GRIMES, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

PER CURIAM.

DECISION ON APPEAL
This is a decision on appeal1 under 35 U.S.C. § 134 from the
Examiner’s rejection of claims 1–20. We have jurisdiction under 35 U.S.C.
§ 6(b).
We reverse.

1 The Real Parties in Interest are Cook Incorporated and MED Institute, Inc.
(App. Br. 1).
Appeal 2012-003820
Application 12/338,020

2
STATEMENT OF THE CASE
The claims are directed to stents. Claims 1 and 9 are representative of
the claims on appeal and read as follows:
1. A stent for use in a medical procedure, the stent comprising:
at least one apex comprising first and second generally straight
portions and a curved portion disposed between the first and second straight
portions,
where the curved portion comprises at least one region having a cross-
sectional area that is less than a cross-sectional area of the first and second
straight portions.

9. A stent for use in a medical procedure, the stent comprising:
at least one apex comprising first and second generally straight
portions and a curved portion disposed between the first and second straight
portions,
where the at least one apex of the stent comprises a generally arcuate
expanded shape, and
where the at least one apex of the stent comprises a compressed state
in which at least a portion of the curved portion overlaps with itself to
reduce the radial profile of the at least one apex in the compressed state.

Issue
The Examiner has rejected claims 1–4, 6–12, 14, 15, and 17–20 under
35 U.S.C. § 102(b) as anticipated by Chobotov2 (Ans. 5–6). The Examiner
has also rejected claims 5, 13, and 16 under 35 U.S.C. § 103(a) as obvious
over Chobotov (Ans. 6). The same issue is dispositive for both rejections,
and we will consider them together. We focus our initial analysis on
independent claims 1 and 9.

2 US 2003/0120338 A1, issued Jun. 26, 2003.
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The issues presented are: Has the Examiner established by a
preponderance of the evidence that Chobotov discloses a stent having an
apex comprising a curved portion between first and second straight portions,
(i) wherein “the curved portion comprises at least one region having a
cross-sectional area that is less than a cross-sectional area of the first and
second straight portions,” as required by claim 1, or
(ii) comprising “a compressed state in which at least a portion of the
curved portion overlaps with itself to reduce the radial profile of the at least
one apex in the compressed state,” as required by claim 9?
Findings of Fact
FF1. The Specification discloses “a stent having at least one apex
comprising first and second generally straight portions and a curved portion
disposed between the . . . straight portions” (Spec. 3, ¶ 10).
FF2. The Specification discloses that the curved portion comprises at
least one region that “has a cross-sectional area that is less than a cross-
sectional area of the stent material in the first and second straight portions”
(id.).
FF3. The Specification discloses that a “reduced area of the stent
material in the curved portion may facilitate . . . compression of the stent to a
relatively low profile delivery configuration” (id.).

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Application 12/338,020

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FF4. Figures 2A, 2B, and 2C of the Specification are shown below:

Figure 2A shows “a top view of an apex” of a stent and Figures 2B and 2C
show cross-sectional views of a straight portion of the apex and a curved
portion of the apex, respectively (id. at 4, ¶¶ 0019–0020).
FF5. The Specification discloses that
curved portion 35 of the stent 20 may include at least one
region having a cross-sectional area that is less than a cross-
sectional area of the first and second straight portions 32 and
34. For example, the curved portion 35 may have a midpoint
36 having a cross-sectional width w2, as shown in FIG. 2C,
which is less than a cross-sectional width w1 of the first and
second straight portions 32 and 34, as shown in FIG. 2B.

(Id. at 6, ¶ 0034.)
FF6. Figure 6 of the Specification is shown below:

Figure 6 shows a curved portion of the apex in fully compressed state in
which “the curved portion 35 may overlap with itself at one or more
locations 75 and 77” (id. at 10, ¶ 0051).
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FF7. The Specification discloses that “the term ‘generally straight’
refers to having a portion aligned with a longitudinal axis L of the stent 20
. . . Accordingly, the first and second straight portions 32 and 34 generally
are parallel with respect to the longitudinal axis L of the stent 20” (id. at 5–
6, ¶ 0033).
FF8. The Examiner finds that Chobotov discloses a stent “comprising
apices having a curved portion and two straight portions” (Ans. 5 (citing
Chobotov at ¶ 0065 and Figs. 1, 4–7, 9, and 11)).
FF9. Figure 11 of Chobotov is shown below:

Figure 11 shows a stent apex configuration wherein the “outer surface 180
of apex 94 takes on a circular radius of curvature as defined by circle 182
having a radius r2 . . . [and] inner surface 184 of apex 94 takes on a circular
radius of curvature defined by circle 186 having a radius r3” (Chobotov 10,
¶ 0125).
FF10. Chobotov discloses that “[r]adius r2 may be equal to or greater
than radius r3” (id.).
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FF11. Chobotov discloses that the “centers of circles 182 and 186 are
offset from each other as indicated by reference numeral 188 . . . [and] [t]his
offset 188 may be equal to, greater than, or less than the width of the strut 71
in the region of apex 94” (id.).
FF12. The Examiner finds that the Chobotov disclosure that offset
188 may be smaller than the strut width 71 and that r2 may be larger than r3
teaches that “the apex of the curved portion may comprise the smallest cross
sectional dimension” (Ans. 5 (citing Chobotov at ¶ 0125 and Fig. 11)).
FF13. Figure 1 of Chobotov is shown below:

Figure 1 shows “an endovascular graft 10 in its deployed configuration”
(Chobotov 4, ¶ 0056).
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FF14. Chobotov discloses that stent 40 “comprises struts 41 and may
also comprise one or more barbs 43. A barb can be any outwardly directed
protuberance” (id. at 6, ¶ 0074).
FF16. The Examiner finds that the Chobotov’s figures show barb
arrangements wherein “the barbed straight portions . . . yield a greater cross
sectional [area]” then the curved portion of the apex (Ans. 5 (citing
Chobotov at Fig. 1)).
FF17. The Examiner finds that, “[w]ith respect to claim 9 . . .the
limitation regarding a compressed state having overlapped portions . . . [is]
intended use wherein the flexible metallic stent portions of Chobotov are
fully capable of being compressed in the manner as claimed” (id. at 5–6).
FF18. The Examiner finds that, “[a]lternatively, the textile structure
of Fig 1, for example, is readable on a stent having straight portions and
curved portions (helical rib)” (id. at 6 (citing Chobotov at Fig. 1)).
FF19. The Examiner finds that, “[w]hen the textile (ePTFE or
polyester . . .) ‘stent’ is not inflated with a fluid medium, the curved portions
would be fully capable of overlapping in the compressed state” (id. (citing
Chobotov at ¶ 0062)).
Analysis
Appellants argue that Chobotov does not teach the “specific apex
structure” of independent claim 1, which requires that “the curved portion
comprises at least one region having a cross-sectional area that is less than a
cross-sectional area of the first and second straight portions” (App. Br. 14).
Appellants argue that the Examiner cites an offset dimension of the
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Chobotov apex, but “Appellants are claiming a cross-sectional area” rather
than an offset dimension (id. (emphasis removed)).
The Examiner responds that the claims “define ‘a region of a curved
portion having a cross sectional area that is less than a cross sectional area of
the first and second portions’ . . . [but] are not limited to a perpendicular
cross sectional area” (Ans. 7 (emphasis removed)). The Examiner reasons
that the claims “are readable on the cross sectional area as shown in Figure
11 of Chobotov and described in paragraph 0125 . . . tapers may form the
smallest area at the apex” (id.).
We conclude that Appellants have the better position. We agree with
Appellants that the ordinary artisan would interpret the recitation of “cross-
sectional area” as recited in appealed claim 1 to mean the area of a cross-
section that is perpendicular to the curved portion or the straight portion,
rather than the area of a longitudinal sectional through the stent apex. That
interpretation is consistent with the Specification wherein Figures 2B and 2C
show perpendicular cross-sectional areas of the curved and straight portions
(FFs 4 and 5).
The Examiner further responds that Chobotov’s “Figures 5A, 6, and 7
show apices and straight portions with what appears to be a constant
thickness but varying width (see top left apex of Figure 6 . . .)” (Ans. 7).
The Examiner’s reasoning is not persuasive. Patent drawings are not
necessarily intended to show accurate relative dimensions and “arguments
based on mere measurement of the drawings [are] of little value.” In re
Chitayat, 408 F.2d 475, 478 (CCPA 1969). Thus, the Examiner’s reliance
on the Chobotov drawings, without pointing to further descriptive support in
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Chobotov, is not sufficient to establish that Chobotov discloses the elements
of claim 1.
The Examiner further responds that Chobotov’s “Figure 1 or 6 shows
a barbed transition region at 43, 45, or 86 along a straight portion which is
larger in area than the apex midpoint” (Ans. 7). The Examiner reasons that
“the barbed region is the straight portion and maximum cross sectional area,
[and] there exists a tapered region . . . down to a constant cross sectional
area of the curved region which is also the smallest cross sectional area of
the straight and curved portions” (id. at 8).
That argument is not persuasive. The Specification discloses that the
term “generally straight” refers to a portion aligned with a longitudinal axis
the stent such that first and second straight portions are generally parallel to
the longitudinal axis of the stent (FF 7). The Examiner has not adequately
explained how Chobotov’s barbed portions, which project laterally from
straight portions that are generally aligned with the axis of the stent (FFs 13
and 14), would be considered to be “first and second generally straight
portions” that are aligned with the axis of the stent, as required by claim 1.
Thus, we reverse the rejection of independent claim 1 and dependent
claims 2–4 and 6–8 as anticipated by Chobotov.
The Examiner has also rejected independent claim 15 as anticipated
by Chobotov. Claim 15 is directed to a stent comprising proximal and distal
apices that each comprises a curved portion disposed between the first and
second straight portions, wherein the curved portions of the apices
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“comprise at least one region having a cross-sectional area that is less than a
cross-sectional area of the first and second straight portions.”3
Appellants argue, as discussed above with regard to claim 1, that
Chobotov does not disclose a stent with an apex that comprises a curved
portion with a cross-sectional area that is less than a cross-sectional area of
the first and second straight portions (App. Br. 14).
For the reasons discussed above, we agree with Appellants that the
Examiner has not adequately explained how Chobotov discloses a stent with
an apex that comprises a curved portion with a cross-sectional area that is
less than a cross-sectional area of the first and second straight portions.
Thus, we reverse the rejection of independent claim 15 and dependent
claims 17–20 as anticipated by Chobotov.
Appellants also argue the rejection of independent claim 9.
Appellants argue that Chobotov does not disclose the claim 9 limitation of a
stent apex that “comprises a compressed state in which at least a portion of
the curved portion overlaps with itself to reduce the radial profile of the at
least one apex in the compressed state” (App. Br. 15–16). Appellants argue
that the Examiner erred in finding that the claim 9 limitation is a statement
of intended use (id. at 16). Appellants argue that the claim 9 recitation that
at least one apex has a “compressed state in which at least a portion of the
curved portion overlaps with itself” is a structural limitation and not a
statement of intended use (id.). Appellants argue that “Chobotov neither
teaches nor suggests such a structure in the compressed state” (id.).

3 The full text of claim 15 can be found in the Claims Appendix to the
Appeal Brief (App. Br. 20-21).
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The Examiner responds that “the claims require a device having
multiple ‘states’ which do not occur simultaneously, but can occur under
outside influence (i.e. whether loaded in delivery device or allowed to
expand)” (Ans. 8). The Examiner reasons that Chobotov’s “flexible metallic
stents or fabric inflatable stents in Chobotov” meet this claim limitation (id.).
The Examiner further reasons that the “direction of the overlap is not recited
in the claims . . . [and] the portions adjacent the midpoint of the V-shaped
arcuate portion in [Chobotov’s] Figure 1 or Figure 4 may be considered as
overlapped when viewed from the side or perpendicular of the V-shaped
curved portion” (id.).
We agree with Appellants that the Examiner has not adequately
explained how Chobotov discloses a stent apex having a compressed state
“in which at least a portion of the curved portion overlaps with itself to
reduce the radial profile” of the Apex, as required by claim 9. The
Examiner’s assertion that the fabric inflatable material of Chobotov’s graft
meets this limitation is not persuasive because the fabric inflatable material
is part of the graft and not the stent that anchors the graft. The Examiner’s
interpretation of the claim 9 recitation of a curved portion that overlaps with
itself in a compressed state as being a statement of intended use that could
be met by applying pressure to Chobotov’s stent is not persuasive because
the Specification discloses that a compressed state of the stent with
overlapping portions in the apex is used for delivery of the stent. Thus one
of skill in the art would understand claim 9 to require a stent that is
configured to have a compressed state with the recited overlapping apex
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portions. Thus, the disputed limitation is a structural limitation, and not an
intended use.
Thus, we reverse the rejection of independent claim 9 and dependent
claims 10–12 and 14 as anticipated by Chobotov.
The Examiner has also rejected dependent claims 5, 13, and 16 under
35 U.S.C. § 103(a) in view of Chobotov. The Examiner relies on Chobotov
as discussed above with regard to independent claims 1, 9, and 15 and the
Examiner concludes that Chobotov would have made obvious the additional
limitations of dependent claims 5, 13, and 16. Thus, we also reverse this
rejection for the reasons discussed above.
Conclusion of Law
The preponderance of the evidence does not support the Examiner’s
conclusion that Chobotov discloses a stent having an apex that comprises a
curved portion disposed between first and second straight portions, wherein
“the curved portion comprises at least one region having a cross-sectional
area that is less than a cross-sectional area of the first and second straight
portions,” as required by claim 1.
The preponderance of the evidence does not support the Examiner’s
conclusion that Chobotov discloses a stent having an apex that “comprises a
compressed state in which at least a portion of the curved portion overlaps
with itself to reduce the radial profile of the at least one apex in the
compressed state,” as required by claim 9.

Appeal 2012-003820
Application 12/338,020

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SUMMARY
We reverse the rejection of claims 1–4, 6–12, 14, 15, and 17–20 under
35 U.S.C. § 102(b). We also reverse the rejection of claims 5, 13, and 16
under 35 U.S.C. § 103(a).

REVERSED

kmm