Ex Parte Hill et alDownload PDFPatent Trial and Appeal BoardDec 9, 201312012911 (P.T.A.B. Dec. 9, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JASON P. HILL, TRACEE E. J. EIDENSCHINK, and GRAIG L. KVEEN ____________ Appeal 2012-002636 Application 12/012,911 Technology Center 3700 ____________ Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and ULRIKE W. JENKS, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL1 This appeal under 35 U.S.C. § 134 involves claims 1-10 and 17-20 (App. Br. 3; Reply Br. 3). Examiner entered rejections under 35 U.S.C. § 103(a). We have jurisdiction under 35 U.S.C. § 6(b). We affirm. STATEMENT OF THE CASE The claims are directed to a valve and a system. Claims 1, 17, and 18 are representative and are reproduced in the Claims Appendix of Appellants’ Brief. 1 The Real Party in Interest is Boston Scientific Scimed, Inc. (App. Br. 3.) Appeal 2012-002636 Application 12/012,911 2 Claims 1-10, 17, and 20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Haug2 and Lau.3 Claims 18 and 19 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Haug, Lau, and Allen.4 ISSUE Does the preponderance of evidence relied upon by Examiner support a conclusion of obviousness? FACTUAL FINDINGS (FF) FF 1. Haug “relates to methods for endovascularly replacing a patient’s heart valve [and] . . . includes the steps of endovascularly delivering a replacement valve and an anchor to a vicinity of the heart valve, the anchor having a braid, and expanding the braid to a deployed configuration against the patient’s tissue” (Haug, Abstract). FF 2. Haug suggests that the anchor braid may be “composed of a shape memory material, [wherein] it may self-expand to or toward its ‘at-rest’ configuration. This ‘at rest’ configuration of the braid can be, for example its expanded configuration, a collapsed configuration, or a partially expanded configuration between the collapsed configuration and the expanded configuration” (id. at 3: ¶ [0037]; see also id. at 5: ¶ [0061]). FF 3. Examiner finds that Haug is silent about a “thread passing over the first end and the second end [of the valve frame] and the longitudinal length between the first end and the second end of the valve frame to hold the valve frame in a partially radially deployed state” (Claim 1; Ans. 5). 2 Haug et al., US 2005/0137693 A1, published June 23, 2005. 3 Lau et al., US 5,873,906, issued February 23, 1999. 4 Allen et al., US 6,989,027 B2, issued January 24, 2006. Appeal 2012-002636 Application 12/012,911 3 FF 4. Examiner finds that Lau suggests a shape-memory stent [F]rame that can be used with a valve . . . that uses a thread . . . that passes over first and second ends of the stent and through inner and outer surfaces of cells of the frame in a woven net configuration that upon removal, allows the stent to expand from a partially radial configuration to a deployed configuration. (Id. and id. at 7.) FF 5. Examiner finds that Lau suggests that “the thread (see FF 4) will travel through eyelets and over the frame during removal and release from an attachment point on the valve frame during removal of the thread” (id. at 5). FF 6. Examiner finds that the combination of Haug and Lau fails to suggest “an expandable filter that extends between structure members that radiate[] away from the elongate delivery catheter” and relies on Allen to make up for the foregoing deficiency in the combination of Haug and Lau (id. at 6). ANALYSIS Based on the combination of Haug and Lau, Examiner concludes that, at the time Appellants’ invention was made, it would have been prima facie obvious “to adjust the partial radial configuration of Haug with the thread as taught by Lau in order to have controlled deployment to accurately and safely deploy the valve and valve frame” (Ans. 5-6). We recognize, but are not persuaded by, Appellants’ contention that Examiner “failed to articulate an apparent reason . . . why a person of ordinary skill in the art at the time of Appellant’s [sic] invention would have modified Haug to include a tether wire, as in Lau, to restrain [the] anchor braid . . . of Haug at a partially expanded configuration” (App. Br. 6). Haug Appeal 2012-002636 Application 12/012,911 4 and Lau both suggest the use of a shape memory device (FF 2 and 4). Haug suggests that the “‘at rest’ configuration” of the shape memory device “can be, for example its . . . collapsed configuration, or a partially expanded configuration between the collapsed configuration and the expanded configuration” (FF 2; Cf. FF 4). Lau suggests that the shape memory device can be used in cooperation with a thread to have controlled deployment to accurately and safely deploy the valve and valve frame (Ans. 5-6; see FF 4). We are not persuaded by Appellants’ contention that “Haug already provides techniques that ‘control[] deployment to accurately and safely deploy the valve and valve frame,’ thereby negating the Examiner’s reason to combine Haug with Lau” (App. Br. 7 (alteration and emphasis original)). “Express suggestion to substitute one equivalent for another need not be present to render such substitution obvious.” In re Fout, 675 F.2d 297, 301, (CCPA 1982); see also In re Mayne, 104 F.3d 1339, 1340 (Fed. Cir. 1997) (“Because the applicants merely substituted one element known in the art for a known equivalent, this court affirms [the rejection for obviousness].”). In particular, we agree with the Examiner that the ordinary artisan would reasonably desire “the added control of the slip line when dealing [with] expanding a shape-memory stent” (Ans. 8). In the delicate context of heart surgery, the Examiner’s reasoning that adding additional means of controlling deployment is desirable is certainly represents a reason to combine the features of the prior art, in order to further increase safety and accuracy of deployment (see, e.g., Ans. 6, 8). For the foregoing reasons, we are not persuaded by Appellants’ contention that “[t]here would be no reason with a rational underpinning to incorporat[e] a tether wire, as in Lau, to restrain [the] anchor braid . . . of Appeal 2012-002636 Application 12/012,911 5 Haug at a partially expanded configuration” (App. Br. 8). For the same reasons, we are not persuaded by Appellants’ contention that “Haug would have guided one of ordinary skill in the art away from using a thread to hold the valve frame in a partially radially deployed state because the partially radially deployed state of Haug is the at-rest configuration” (id.; Cf. FF 2 (Haug’s “‘at rest’ configuration of the braid can be, for example its expanded configuration, a collapsed configuration, or a partially expanded configuration between the collapsed configuration and the expanded configuration”). Claims 17 and 20: Appellants contend that the rejection of claims 17 and 20 are improper for the reasons set forth above with respect to independent claim 1 (App. Br. 10-11). We are not persuaded for the reasons set forth above. Claims 18 and 19: Appellants contend that Allen “does nothing to remedy the deficiencies of the Haug-Lau combination” (App. Br. 11). Having found no deficiency in the combination of Haug and Lau, we are not persuaded by Appellants’ contention that Allen, relied upon by Examiner to suggest, the subject matter of Appellants’ claims 18 and 19, specifically, “an expandable filter that extends between structure members that radiate[] away from the elongate delivery catheter,” fails to make up for a deficiency in the combination of Haug and Lau (see FF 6; Ans. 6-7). Appeal 2012-002636 Application 12/012,911 6 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 Haug and Lau is affirmed. Claims 2-10, 17, and 20 fall with claim 1. The rejection of claim 18 under 35 U.S.C. § 103(a) as unpatentable over the combination of Haug, Lau, and Allen is affirmed. Claim 19 falls with claim 18. 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 cdc Copy with citationCopy as parenthetical citation