Ex Parte IgakiDownload PDFBoard of Patent Appeals and InterferencesApr 12, 201010287752 (B.P.A.I. Apr. 12, 2010) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte KEIJI IGAKI ____________ Appeal 2009-005300 Application 10/287,752 Patent 5,762,625 Technology Center 3700 ____________ Decided: April 12, 2010 ____________ Before: WILLIAM F. PATE, III, JENNIFER D. BAHR, and MICHAEL W. O'NEILL, Administrative Patent Judges. BAHR, Administrative Patent Judge. DECISION ON APPEAL Appeal 2009-005300 Application 10/287,752 2 STATEMENT OF THE CASE Keiji Igaki (Appellant) appeals under 35 U.S.C. § 134 (2002) from the Examiner's decision rejecting reissue claims 1-11. We have jurisdiction over this appeal under 35 U.S.C. § 6 (2002). The Invention Appellant's claimed invention is directed to a luminal stent made of a continuous bioabsorbable polymer fiber formed in a non-woven, non-knitted tube. Col. 1, ll. 49-53. Claim 1, reproduced below, is illustrative of the claimed invention. 1. A luminal stent formed from a single, continuous yarn of continuous bioabsorbable polymer fibers in a non-woven, non-knitted, and meandering state in a shape conforming to a tube. The Rejections The Examiner relies on the following references: Tang US 4,920,203 Apr. 24, 1990 MacGregor US 4,994,071 Feb. 19, 1991 Goldberg CA 2,025,626 Mar. 28, 1991 MacGregor US 5,015,253 May 14, 1991 Pinchuk US 5,019,090 May 28, 1991 Appellant seeks review of the Examiner's rejections under 35 U.S.C. § 103(a) of claims 1, 3, 4, and 7-11 as unpatentable over Pinchuk and Tang; of claim 2 as unpatentable over Pinchuk, Tang, and MacGregor ('253); of claim 5 as unpatentable over Pinchuk, Tang, and Goldberg; and of claim 6 as unpatentable over Pinchuk, Tang, and MacGregor ('071). Appeal 2009-005300 Application 10/287,752 3 SUMMARY OF DECISION We AFFIRM. ISSUE Claim 1 requires a stent made of a continuous bio-absorbable polymer yarn formed in a "non-woven, non-knitted, and meandering state." The Examiner found that Pinchuk describes a stent made of a continuous bio- absorbable polymer strand formed in a non-woven, non-knitted, and meandering state. Ans. 3. The Examiner found it was well known to form a strand from a plurality of fibers to make yarn, and that Tang describes a biodegradable polymer yarn used in a medical stent. Id. The Examiner concluded that it would have been obvious to use a biodegradable yarn as taught in Tang instead of the strand in Pinchuk in order to increase the strength of the strand. Ans. 3-4. Appellant argues that Pinchuk's stent has a weave or a knot (Reply Br. 3), or is formed from a series of interwoven lengths of yarn (Appeal Br. 6-8), and thus is not "non-woven" or "non-knitted." Appellant also argues that Tang does not describe a stent (Reply Br. 4-5), and that neither reference provides motivation to use a yarn as taught in Tang instead of the strand of Pinchuk. Reply Br. 5-7. Appellant additionally argues that Pinchuk discloses a stent having a circular, or helical, structure, and thus is not a stent having a "meandering state." Reply Br. 4. Appellant argues claims 8-11, 2, 5, and 6 as separate groups, but relies on the argument presented with respect to claim 1. Reply Br. 7-8. Thus, the outcome with respect to claim 1 will control the outcome with respect to claims 2, 5, 6, and 8. In addition, Appeal 2009-005300 Application 10/287,752 4 claims 3, 4, and 7 stand or fall with claim 1, and claims 9-11 stand or fall with claim 8. 37 C.F.R. § 41.37(c)(1)(vii) (2007). Therefore, the dispositive issues in this appeal are whether Pinchuk describes a stent formed in a "non-woven, non-knitted, and meandering state" and whether the Examiner has established that it would have been obvious to one of ordinary skill in the art to modify Pinchuk's stent formed from a strand to be formed from a yarn, such as is described in Tang. FACTS PERTINENT TO THE ISSUES (FINDINGS-OF-FACT (FF)) FF1 Pinchuk describes a stent formed from a continuous, undulating length 33 wound helically around a mandrel 41 to form a number of circumferential sections 32 defining the length of stent 31. Col. 5, ll. 15-52, fig. 2, depicting undulating length 33, fig. 3, depicting undulating length 33 wrapped around mandrel 41 to form stent 31. When the helical winding is finished, the two loose ends 43 are hooked or welded to the adjacent circumferential section 32. Col. 5, ll. 53-66, fig. 5, depicting a close-up of end 43 hooked to adjacent circumferential section 32. FF2 A dictionary definition of "weave" is "[t]o make cloth by interlacing strands of warp and filling threads" (McGraw-Hill Dictionary of Scientific and Technical Terms, 2158 (Sybil P. Parker, ed., 5th ed. 1994)); or "to form (cloth) by interlacing strands (as of yarn); specif: to make (cloth) on a loom by interlacing warp and filling threads" (Webster's Ninth New Collegiate Dictionary, 1336 (Frederick C. Mish Appeal 2009-005300 Application 10/287,752 5 et al. eds., 1988)). Thus, a "weave" requires two separate lengths of thread or yarn: the warp, and the filling. FF3 A dictionary definition of "knit" is "[m]aking a fabric by interlocking loops of yarn by means of needles or wires" (McGraw-Hill Dictionary of Scientific and Technical Terms, 1092 (Sybil P. Parker, ed., 5th ed., 1994)) or "to form by interlacing yarn or thread in a series of connected loops with needles" (Webster's Ninth New Collegiate Dictionary, 664 (Frederick C. Mish et al. eds., 1988)). Thus, a "knit" material requires an interlocked series of loops. FF4 "Woven" fabric, in the textile art, is [f]abric[] composed of two sets of yarns. One set of yarns, the warp, runs along the length of the fabric. The other set of yarns, the fill or weft, is perpendicular to the warp. Woven fabrics are held together by weaving the warp and the fill yarns over and under each other. "Textile Dictionary," http://www.fabriclink.com/Dictionaries/ Textile.cfm (last accessed Apr. 1, 2010). FF5 "Knit" fabric, in the textile art, is [f]abric[] made from only one set of yarns, all running in the same direction. Some knits have their yarns running along the length of the fabric, while others have their yarns running across the width of the fabric. Knit fabrics are held together by looping the yarns around each other. Knitting creates ridges in the resulting fabric. Wales are the ridges that run lengthwise in the fabric; courses run crosswise. "Textile Dictionary," http://www.fabriclink.com/Dictionaries/ Textile.cfm (last accessed Apr. 1, 2010). Appeal 2009-005300 Application 10/287,752 6 FF6 A dictionary definition of "meandering" is "to follow a winding or intricate course." Webster's Ninth New Collegiate Dictionary, 736 (Frederick C. Mish et al. eds., 1988). FF7 Tang describes a yarn made of a biodegradable biopolymer, formed into a fibrous device to be used in woven, knitted, or non-woven articles. Col. 5, ll. 21-43, and particularly col. 5, l. 35 referring to devices constructed of "non-woven" fabric. One embodiment includes vascular stents. Col. 5, l. 64. PRINCIPLES OF LAW Rejections on obviousness grounds must be supported by "some articulated reasoning with some rational underpinning" to combine the known elements in the manner required in the claim at issue. In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). However, "the analysis need not seek out precise teachings directed to the specific subject matter of the challenged claim, for a court can take account of the inferences and creative steps that a person of ordinary skill in the art would employ." KSR, 550 U.S. at 418. "[A] person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense." Id. at 421. Further, "if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve Appeal 2009-005300 Application 10/287,752 7 similar devices in the same way, using the technique is obvious unless its actual application is beyond his or her skill." Id. at 417. ANALYSIS Pinchuk describes a stent formed from a continuous, helically wrapped strand of biodegradable material. FF1. A strand is formed into an undulating series of expandable sections that are then wound in a helical manner to create continuous series of circumferential sections forming the stent. Id. To prevent loose ends, each end circumferential section hooks onto or is welded to the adjacent circumferential section. Id. Appellant first argues that Pinchuk's stent is formed from multiple interwoven lengths of yarns. Appeal Br. 6-8. However, as pointed out by the Examiner (Ans. 6), Pinchuk describes a stent formed from a single continuous strand that is helically wrapped, with only the two ends hooked or welded (see also FF1). Appellant does not further contest the Examiner's finding in the Reply Brief. Appellant considers the single hook on each circumferential section to vitiate Pinchuk's ability to be considered "non-woven" or "non-knitted." Reply Br. 3-4. As such, Appellant would appear to consider any crossing of a strand to be "woven" or "knitted." In general, a woven material is made from a series of parallel warp strands running the length of the material, with a weft strand being woven above and below each of the warp strands to form the material. FF2; FF4. Knitted materials, on the other hand, are formed from a series of consecutive loops of a single strand. FF3; FF5. The record before us does not indicate that the nomenclature as applied to stents differs. Appeal 2009-005300 Application 10/287,752 8 Thus, a "woven" stent is a stent made using warp and filling strands. As such, Pinchuk's stent is clearly distinguishable from a woven stent because it does not utilize warps and fillings, but rather, is made from a single strand. FF1; cf. FF2, FF4. Similarly, a "knitted" stent is a stent made using a series of interconnected loops. Pinchuk's stent is not knitted because the stent is formed from a series of unconnected loops. FF1. While the very ends of Pinchuk's stent are hooked to an adjacent loop, this single hook does not form a series of unconnected loops. Id.; cf. FF3, FF5. In addition, Pinchuk's end hooks could also be welded to an adjacent section, which would not form a loop at all. FF1. Further, if anything that contained one single loop was "knitted" then virtually every knot, hitch, or crossed strand would be considered to be formed as a "knitted" material, rendering the term, as distinguishing knitted materials from other textiles, superfluous. See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358, 1362 (Fed. Cir. 2007) (denouncing claim constructions that render phrases in claims superfluous). Therefore, Pinchuk's stent would not be considered "woven" or "knitted" by one of ordinary skill in the art. Appellant argues that Pinchuk does not describe a yarn in a "meandering state." Reply Br. 4. In particular, Appellant references figure 2 of Appellant's disclosure, which depicts a particular "meandering" "loop- back structure." Id. However, claim 1 does not require a "loop-back structure," or any other particular shape. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). Rather, claim 1 merely requires that the yarn be in a "meandering state." Appellant's Specification, somewhat contradictorily, states that the yarn is "entwined around the peripheral surface of the tubular Appeal 2009-005300 Application 10/287,752 9 member," not "in the wound or coiled state," but "meandered or coiled into one or more loops." Spec., col. 3, l. 4-12. Thus, the Specification does not specially define the term "meandering." In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (requiring special definitions to "be done with reasonable clarity, deliberateness, and precision"). According to the plain meaning of "meandering," a stent formed from a "meandering" yarn could be formed of a yarn that follows a winding course. See FF6. In the Examiner's proposed combination, Pinchuk describes a length that winds back and forth (undulating length 33) and is coiled into several loops (circumferential sections 32) around the peripheral surface of the tubular mandrel (41). See FF1; Ans. 3-4. Therefore, the combined teachings of Pinchuk and Tang describe the limitation of claim 1 requiring that the yarn be in a "meandering state." Appellant further argues that the fibers and yarns of Tang are designed for flexible materials, not rigid materials like stents. Reply Br. 4-5. However, Tang explicitly considers vascular stents. FF7. Lastly, Appellant argues that neither Pinchuk nor Tang provides motivation to use a yarn as described in Tang in Pinchuk's stent. Reply Br. 5-7. This argument is not convincing because the Supreme Court has stated that a rigid insistence on teaching, suggestion, or motivation is incompatible with its precedent concerning obviousness. See KSR, 550 U.S. at 419. Moreover, in making this argument, Appellant has failed to take into consideration the fact that Tang explicitly contemplates vascular stents. See FF7. As the Examiner found, yarn provides certain advantages that a single strand does not provide, such as increased strength. Ans. 3. See KSR, 550 U.S. at 417 (it is generally obvious to improve similar devices in similar Appeal 2009-005300 Application 10/287,752 10 ways). Accordingly, the evidence establishes an apparent reason to make the proposed combination. Appellant does not provide any evidence that the proposed combination would have been beyond the technical grasp of a person of ordinary skill in the art, or yielded results that could not have been predicted by a person of ordinary skill in the art. CONCLUSION The record before us indicates that Pinchuk describes a stent formed in a "non-woven, non-knitted, and meandering state" and that it would have been obvious to substitute the single strand of material in the non-woven, non-knitted stent described in Pinchuk with yarn, as taught in Tang, in order to increase the strength of the stent. DECISION The Examiner's decision is affirmed as to claims 1-11. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2007). AFFIRMED Appeal 2009-005300 Application 10/287,752 11 hh RADER FISHMAN & GRAUER PLLC LION BUILDING 1233 20TH STREET N.W., SUITE 501 WASHINGTON, DC 20036 Copy with citationCopy as parenthetical citation