Ex Parte Fariabi

Board of Patent Appeals and Interferences

Jun 29, 2011

10750079 (B.P.A.I. Jun. 29, 2011)

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.
10/750,079 12/31/2003 Sepehr Fariabi ACSG-66757 (0970CCC) 1878
24201 7590 06/29/2011
FULWIDER PATTON LLP
HOWARD HUGHES CENTER
6060 CENTER DRIVE, TENTH FLOOR
LOS ANGELES, CA 90045
EXAMINER
PREBILIC, PAUL B
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
06/29/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte SEPEHR FARIABI
____________________

Appeal 2010-001837
Application 10/750,079
Technology Center 3700
____________________

Before KEN B. BARRETT, PHILLIP J. KAUFFMAN and MICHAEL L.
HOELTER, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Sepehr Fariabi (Appellant) seeks our review under 35 U.S.C. § 134 of
the final rejection of claims 37-85. Claims 1-36 have been canceled. We
have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

THE INVENTION
This invention pertains to an arterial stent.
Claim 37, reproduced below, is representative of the subject matter on
appeal.
37. A cylindrically shaped balloon expandable stent
configured for use in a coronary artery, comprising:
a plurality of independently expandable and
interconnected cylindrical elements formed of an alloy
containing cobalt, chromium, molybdenum, and nickel, and one
alloy component selected from the group consisting of tungsten,
iron and manganese, and generally aligned along a common
longitudinal axis; and
the stent has a first low profile configuration for delivery
and a second radially expanded configuration and is plastically
deformable from the first low profile delivery configuration to
the second radially expanded configuration, the second radially
expanded configuration having a diameter suitable to hold open
the coronary artery;
wherein the cylindrical elements of the stent assume the
first low profile delivery configuration through compression
and have an elasticity insufficient to allow expansion from the
first low profile delivery configuration to the second radially
expanded configuration without plastic deformation.

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REFERENCES
The prior art relied upon by the Examiner is:
Bokros U.S. 4,300,244 Nov. 17, 1981
Hillstead U.S. 4,856,516 Aug. 15, 1989
Tower U.S. 5,217,483 Jun. 8, 1993
Mayer U.S. 5,824,077 Oct. 20, 1998
Robinson U.S. 5,891,193 Apr. 6, 1999

THE REJECTIONS
The following Examiner’s rejections are before us for review:
1. Claims 37-50, 53, 54, 56-76, and 82-85 are rejected under 35
U.S.C. § 103(a) as being unpatentable over Robinson and Mayer (Ans. 3).
2. Claims 51 and 52 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Robinson and Mayer as applied against claim 37
and further in view of Hillstead or Tower (Ans. 7).
3. Claims 55 and 77-81 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Robinson and Mayer as applied against claim 37,
and further in view of Bokros (Ans. 7).

OPINION
Appellant argues that each claim on appeal calls for a “balloon-
expandable” stent that undergoes “plastic deformation” in order to attain its
expanded state within an artery (App. Br. 12). Appellant contends that the
“independent claims do not lay claim to the process by which such property
is imparted but claim the structural characteristics that are inherent in the
resulting stent” (App. Br. 12).

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A. The Rejection of Claims 37-50, 53, 54, 56-76 and 82-85 as being
Unpatentable over Robinson and Mayer

Appellant addresses each independent claim but offers substantially
the same argument for each. Appellant does not offer separate arguments
for the dependent claims. We deem Appellant to argue claims 37-50, 53, 54,
56-76 and 82-85 as a single group (App. Br. 12). We select independent
claim 37 as representative of this group with the remaining claims standing
or falling with claim 37. See 37 C.F.R. § 41.37(c)(1)(vii). Appellant’s
contentions are addressed below.

1. Robinson Does Not Suggest Expansion by Plastic Deformation
Within the Vessel For Which it is Configured for Use.

When addressing Robinson, Appellant states that
[w]hile it is true that the wire [of Robinson] is plastically
deformable and the resulting structure is ultimately plastically
deformable, there is no suggestion or teaching that the structure
formed of the bent wire is capable of attaining its expanded
configuration within the vessel for which it is configured for use
(as is claimed) by plastic deformation
(App. Br. 13) (italics added). More specifically, Appellant contends that for
Robinson’s stent to undergo plastic deformation, it “would have had to have
been expanded well beyond the diameter of the coronary artery” and that
Appellant’s device and Robinson’s device result “in two mutually exclusive
intended uses” (Reply Br. 3-5).
As there is no dispute that Robinson’s wire can be bent (See Robinson
5:31-51, 6:35-37), the Examiner finds that Appellant’s assertion “is based
upon where the device is intended to be utilized and not on any particular
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structure” (Ans. 8). The Examiner states that Robinson’s stent “could be
expanded to a state where there would be no bends in the wires” and that this
“expanded diameter reads on the ‘diameter suitable to hold open the
coronary artery’ as claimed” (Ans. 9).
Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997) states that “where a
patentee defines a structurally complete invention in the claim body and uses
the preamble only to state a purpose or intended use for the invention, the
preamble is not a claim limitation.” The preamble to Appellant’s claim 37
states that the claimed stent is “for use in a coronary artery.” The body of
claim 37 further recites a diameter “suitable to hold open the coronary
artery.” We conclude that this claim language addresses the intended use of
Appellant’s stent and is not a claim limitation. We agree with the
Examiner’s finding that Appellant’s assertions are based on where the
device is intended to be used and not on any claimed structure. Further,
Appellant does not provide any evidence that Robinson’s stent is incapable
of undergoing plastic deformation when expanded or that Robinson’s stent is
incapable of the use claimed. Accordingly, we are not persuaded by
Appellant’s contention.

2. Robinson’s Stent is Self-Expanding and Cannot be Plastically
Deformed to its Expanded State, i.e., the State it is Already In

Claim 37 states “wherein the cylindrical elements of the stent … have
an elasticity insufficient to allow expansion from the first low profile
delivery configuration to the second radially expanded configuration without
plastic deformation.” (Emphasis added). Appellant contends that unlike this
claim language, Robinson “has an elasticity that is sufficient to allow its
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expansion to the expanded configuration” and that Robinson “cannot be
plastically deformed to its expanded state, i.e., the state it is already in”
(App. Br. 13). The Examiner addresses this contention by more specifically
identifying “what the Examiner considers the expanded configuration” to be
which is “a configuration of the bends (37) of [Robinson’s] Figure 4 being
completely unbent” (Ans. 9). Appellant acknowledges as “true that
[Robinson’s] wire is plastically deformable” when expanded to an unbent
state (App. Br. 13). Accordingly, we are not persuaded by Appellant’s
contention.

3. Robinson’s Stent Does Not have the Unexpected Ductility
Necessary for it to Undergo Plastic Deformation

Appellant contends that Robinson’s material is inherently elastic
which is why it is “for use in self-expanding applications” (App. Br. 15).
Appellant does not dispute that his material and Robinson’s material “‘is
extremely similar’” or “‘closely related,’” but Appellant explains that
“[w]ithout the proper treatment of the alloy prior to its use as is described in
the patent application,” Robinson’s material “simply doesn’t have the
ductility that is necessary for it to undergo plastic deformation” (App. Br.
15). Appellant asserts that because of this additional processing, its material
“has different physical properties that unexpectedly renders a stent” that is
“compatible with balloon delivery systems” (App. Br. 15, see also Reply Br.
5-6).
Appellant acknowledges that “the process by which such product is
made is not the focus of the present patent application” even though it yields
“a different structure than what is described in the cited references” (App.
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Br. 15). The Examiner, however, maintains that the burden has shifted “to
Appellant to show an unobvious difference between the claimed invention
and the closest prior art” and that “Appellant failed to provide such
evidence” (Ans. 9-10).
“On appeal to the Board, an applicant can overcome a rejection by
showing insufficient evidence of prima facie obviousness or by rebutting the
prima facie case with evidence of secondary indicia of non[-]obviousness.”
In re Rouffet, 149 F.3d 1350, 1355 (Fed. Cir. 1998); see also In re Spada,
911 F.2d 705, 708 (Fed. Cir. 1990) (“when the PTO shows sound basis for
believing that the products of the applicant and the prior art are the same, the
applicant has the burden of showing that they are not.”). Here, the burden
has been shifted to Appellant to show that the claimed alloys have plastic
deformation properties distinct and unobvious from those of Robinson.
Appellant has submitted no evidence (Evidence Appendix: “None”)
regarding these plastic deformation properties other than referring to the
Specification for a description of the manufacturing processes involved (See
Reply Br. 5-6). Based on the record before us, we are not persuaded by
Appellant’s contention.

4. Robinson Teaches Away from Appellant’s Invention

Appellant contends that Robinson “teaches away” from being sized to
expand as set forth by the Examiner because to expand Robinson “by plastic
deformation would require its expansion to a diameter well beyond the
diameter of such artery and would therefore render it unsuitable for ‘use in a
coronary artery’ as is required by all claims” (App. Br. 15-16, see also Reply
Br. 3-4). We are not persuaded by this contention as it again addresses
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intended use. Further, Appellant’s claim 37 does not express a specific
upper limit on expanded size and we agree with the Examiner’s finding that
“if a stent designed for a child were used in an adult, it could be expanded to
have no bends” (Ans. 10). Additionally, Appellant’s contention that
Robinson teaches away is unsupported by any showing how Robinson
criticizes, discredits, or discourages the claimed invention. See In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004).

5. The Claiming of a Characteristic Comprises a Structural
Limitation

Appellant contends that while “requiring the stent to actually undergo
the plastic deformation would comprise the claiming of a use, the claiming
of a characteristic comprises a structural limitation” (Reply Br. 3). More
specifically, Appellant contends that “such structural limitation is what
effectively avoids the cited art” because a “stent that is plastically
deformable as claimed avoids the prior art even if it is never deformed,
i.e.[,] used” (Reply. Br. 3). Presuming, arguendo, Appellant’s statements
are correct, Appellant nevertheless acknowledges that at least Robinson’s
stent is plastically deformable (See App. Br. 13). Consequently, Appellant’s
contention that this claimed structural limitation (i.e., “plastically
deformable”) avoids the cited art is not persuasive.

6. The Non-Obviousness of a Structure can be Supported by How
it is Used or How it is Usable

Appellant contends that “while the claims require a distinguishing
structure (as claimed) the non-obviousness of such structure can clearly be
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supported by how it is used or how it is usable” (Reply Br. 3). Appellant
provides no evidence or citation to support this contention (Reply Br. 3). To
the contrary, it has long been settled that claims must be distinguished from
the prior art in terms of structure rather than function. See In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir.1997) (claims for conical dispensing top for
popped popcorn unpatentable over prior art disclosing conical spout for
open-ended containers, which contains all structural limitations recited in the
claims). As Appellant bases this contention on the use, and not the structure,
of its claimed device, we are not persuaded.
Based on the above, we affirm the rejection of claim 37, as well as
claims 38-50, 53, 54, 56-76, and 82-85, as being unpatentable over Robinson
and Mayer.

B. The Rejection of Claims 51 and 52 as being Unpatentable over
Robinson and Mayer as Applied Against Claim 37 and Further in
view of Hillstead or Tower

Appellant argues claims 51 and 52 as a single group (App. Br. 16).
We select independent claim 52 as representative of this group with the
remaining claim standing or falling with claim 52. See 37 C.F.R. §
41.37(c)(1)(vii).
Appellant contends that “the cited art teaches away” as the elasticity
required for self-expanding applications “is irreconcilable with the ductility
required for balloon-expandable applications” (App. Br. 16). The issues
regarding ductility (i.e., plastic deformation) have previously been
discussed, are incorporated herein and will not be repeated. As regarding
“balloon-expandable,” the preamble to claim 52 recites a “balloon-
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expandable” stent. This phrase is not used elsewhere in the claim. We are
instructed that “where a patentee defines a structurally complete invention in
the claim body and uses the preamble only to state a purpose or intended use
for the invention, the preamble is not a claim limitation.” Rowe, 112 F.3d at
478. We find that Appellant has defined a structurally complete invention in
the claim body and as such, the preamble’s inclusion of “balloon-expandable”
is not a claim limitation. Further, Appellant has not presented evidence that the
cited art, and particularly Robinson, is incapable of being “balloon-expandable”
nor does Appellant show where the cited art criticizes, discredits, or
discourages the claimed invention (See Fulton, 391 F.3d at 1201).
Accordingly, we are not persuaded by Appellant’s contention.
Claim 52 recites “an interior chamber configured to receive an
expandable member for plastically expanding the stent” (italics added). The
Examiner concludes that the plastic deformation characteristic “is not
positively required for claim 52” (Ans. 8). Appellant contends that this claimed
configuration “clearly requires” the stent to undergo plastic deformation and
that “it is positively required for the material to be plastically deformable”
(Reply Br. 2).
Appellant’s claim is directed to an apparatus claim and thus the
apparatus must be distinguished from the prior art in terms of structure,
rather than function. See Schreiber, 128 F.3d at 1477. As Appellant has not
shown that the cited art is incapable of undergoing plastic deformation (in
fact, Appellant acknowledges that at least Robinson is capable of plastic
deformation, see App. Br. 13), we are not persuaded by Appellant’s
contentions.
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Based on the above, we affirm the rejection of claim 52, as well as
claim 51, as being unpatentable over Robinson and Mayer as applied against
claim 37 and further in view of Hillstead or Tower.

C. The Rejection of Claims 55 and 77-81as being Unpatentable over
Robinson and Mayer as Applied Against Claim 37 and Further in
view of Bokros

Appellant argues claims 55 and 77-81 as a single group (App. Br. 16).
We select independent claim 77 as representative of this group with the
remaining claim standing or falling with claim 77. See 37 C.F.R. §
41.37(c)(1)(vii).
Again, Appellant contends that “the cited art teaches away” from the
present invention because the elasticity required for self-expanding
applications “is irreconcilable with the ductility required for balloon-
expandable applications” (App. Br. 16). The issues regarding ductility (i.e.,
plastic deformation) and “balloon-expandable” have previously been
discussed, are incorporated herein and will not be repeated. As all the
contentions presented have previously been addressed, we affirm the
rejection of claim 77, as well as claims 55 and 78-81 over Robinson and
Mayer as applied against claim 37 and further in view of Bokros.

DECISION
The decision of the Examiner to reject
1. claims 37-50, 53, 54, 56-76 and 82-85 under 35 U.S.C. § 103(a)
as being unpatentable over Robinson and Mayer is affirmed,
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2. claims 51 and 52 under 35 U.S.C. § 103(a) as being
unpatentable over Robinson and Mayer as applied against claim 37 and
further in view of Hillstead or Tower is affirmed, and
3. claims 55 and 77-81 under 35 U.S.C. § 103(a) as being
unpatentable over Robinson and Mayer as applied against claim 37 and
further in view of Bokros is 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)(1)(iv).

AFFIRMED

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