Ex Parte Furst

Patent Trial and Appeal Board

Mar 18, 2013

10810356 (P.T.A.B. Mar. 18, 2013)

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.
10/810,356 03/26/2004 INV001Joseph G. Furst ICON 213110US03 1250
27885 7590 03/19/2013
FAY SHARPE LLP
1228 Euclid Avenue, 5th Floor
The Halle Building
Cleveland, OH 44115
EXAMINER
BUI, VY Q
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
03/19/2013 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 JOSEPH G. FURST
__________

Appeal 2011-012680
Application 10/810,356
Technology Center 3700
__________

Before TONI R. SCHEINER, DONALD E. ADAMS, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) involving claims to an
expandable intraluminal graft. The Patent Examiner rejected the claims as
anticipated and/or obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

STATEMENT OF THE CASE
Claims 89, 90, 92, 93, 98, 100, 104-106,108 and 112, 113, 115-125,
127, 128, 130,131,133, 134, 139 and 140 are on appeal. Claim 89 is
representative and reads as follows:
Appeal 2011-012680
Application 10/810,356

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89. An expandable intraluminal graft for use within a body
passageway including a body member, a[n] intermediate compound,
and biological agent, said intermediate compound, said at least one
biological agent, and mixtures thereof coated on at least a portion of
the body member, said body member having first and second ends and
a wall surface disposed between said first and second ends defining a
longitudinal axis of said body member, said body member having a
first cross-sectional shape having a first cross-sectional area which
permits intraluminal delivery of said body member into the body
cavity, and a second expanded cross-sectional shape having a second
cross-sectional area which is greater than said first cross-sectional
area, said biological agent at least partially coated on or secured to the
surface of said body member, said biological agent including two or
more compounds selected from the group consisting of Trapidil, GM-
CSF, Taxol, rapamycin, and mixtures thereof, said biological agent
including Trapidil, said intermediate compound at least partially
securing said biological agent to said body member, said intermediate
compound at least partially encapsulating said biological agent in said
intermediate compound, and combinations thereof.

The Examiner rejected the claims as follows:
• claims 89, 112, 124 and 127 under 35 U.S.C. § 102(e) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as
unpatentable over Hossainy;1
• claims 90, 92, 93, 98,100,104,2 105, 106,108, 115-123, 125, 128,
and 139 under 35 U.S.C. § 103(a) as unpatentable over Hossainy and
Machan;3

1 Patent No. US 6, 287,628 B1 issued to Syed F.A. Hossainy et al., Sep. 11,
2001.
2 Claim 104 is not listed in any of the rejections. However, both the
Examiner and Appellant include dependent claim 104 among the list of
claims that are rejected and pending in the application. (Ans. 2; App. Br. 2.)
Claim 104 depends from claim 89 and further recites that the “biological
Appeal 2011-012680
Application 10/810,356

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• claims 89, 130 and 131 under 35 U.S.C. § 103(a) as unpatentable
over Hossainy, Machan, and Schwartz;4 and
• claims 133, 134 and 140 under 35 U.S.C. § 103(a) as unpatentable
over Hossainy and Sirhan.5

ANTICIPATION/OBVIOUSNESS
I. The Rejection Over Hossainy
The Examiner’s position is that Hossainy disclosed a stent comprising
pores or depots deposited with a therapeutic substance, such as trapidil
(triazolopyrimidine) a well known cytostatic biological agent for inhibiting
cell growth and division, and rinsed with a fluid comprising taxol to form a
coating of taxol on the outer surface of the stent. (Ans. 4-5.) The Examiner
also found that Hossainy disclosed a rinse fluid comprising biodegradable
materials, such as DL-PLA, L-PLA, to form a polymeric coating
impregnated with a therapeutic substance for controlling the release rate of
the therapeutic substance. (Id. at 5.)

agent is releasably coated on said body member,” which limitation is also
recited in dependent claim 105 rejected over Hossainy and Machan. Thus,
we understand claim 104 to have been inadvertently omitted from the list of
claims rejected over Hossainy and Machan. We deem this error harmless
and present the correct claim listing here for clarity.
3 Patent Application Publication No. US 2002/0065546 A1 by Lindsay S.
Machan et al., published May 30, 2002.
4 Patent No. US 6, 368,658 B1 issued to Marlene Schwarz et al., Apr. 9,
2002.
5 Patent Application Publication No. US 2002/0082679 A1 by Motasim
Sirhan et al., published Jun. 27, 2002.

Appeal 2011-012680
Application 10/810,356

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Alternatively, the Examiner concluded that it would have been
obvious to one of ordinary skill in the art to have rinsed the stent in a
solution of trapidil and the biodegradable polymer to form a coating on the
stent comprising trapidil impregnated in the polymer. (Id.)
Appellant acknowledges that Hossainy “discloses a stent that could
include two different biological agents.” (Reply Br. 2.) However, Appellant
contends, among other things, that Hossainy does not teach or suggest (a) an
intermediate compound at least partially securing the biological agent to the
body member of the stent, or (b) an “intermediate compound at least
partially encapsulating said biological agent in said intermediate
compound,” as required by claim 89. (Id.) Appellant asserts that the recited
“biological agent” includes two or more compounds. (Id.) Thus, according
to Appellant, the Examiner’s finding that Hossainy taught, or alternatively,
suggested at least partially encapsulating one compound, i.e., taxol or
trapidil, does not satisfy the claim requirement of an intermediate compound
securing and/or encapsulating said biological agent, i.e., two or more of the
recited compounds, on the stent. (Id.)
We agree with Appellant. Independent claim 89 describes the
“biological agent” as “including two or more compounds selected from the
group consisting of Trapidil, GM-CSF, Taxol, rapamycin, and mixtures
thereof, said biological agent including Trapidil.” (App. Br. 12, Claims
App’x.) Thus, the claim term “biological agent” refers to a combination of
at least two compounds. The Examiner’s rejection does not include a
finding that Hossainy taught or suggested an intermediate compound at least
partially (a) securing at least two compounds to said body member, or (b)
encapsulating at least two compounds in said intermediate compound.
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Application 10/810,356

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Rather, the Examiner found that Hossainy taught or suggested an
intermediate compound partially encapsulating taxol or trapidil. (Ans. 5, 8-
9.) Consequently, the Examiner did not find that the prior art set forth each
element in the claim. See Verdegaal Bros. v. Union Oil Co. of California,
814 F.2d 628, 631 (Fed. Cir. 1987). Nor did the Examiner properly
determine the differences between the claimed subject matter and the prior
art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966).
Accordingly, we reverse the rejection of claims 89, 112, 124 and 127
under 35 U.S.C. § 102(e) as being anticipated by or, in the alternative, under
35 U.S.C. § 103(a) as unpatentable over Hossainy.
II. The Rejections Over Combinations Including Hossainy
The Examiner’s obviousness rejections over combinations including
Hossainy each rely on Hossainy as teaching or suggesting the limitations of
independent claim 89. (Ans. 6-7.)
Accordingly, we reverse these obviousness rejections for the same
reasons discussed regarding the obviousness rejection of claims 89, 112, 124
and 127.

SUMMARY
We reverse each of the Examiner’s rejections.

REVERSED
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