Ex Parte Jang

Board of Patent Appeals and Interferences

Jun 20, 2011

10419280 (B.P.A.I. Jun. 20, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte G. DAVID JANG
____________

Appeal 2009-014456
Application 10/419,280
Technology Center 3700
____________

Before STEFAN STAICOVICI, KEN B. BARRETT, and
FRED A. SILVERBERG, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-014456
Application 10/419,280

2
STATEMENT OF THE CASE
G. David Jang (Appellant) appeals under 35 U.S.C. § 134 from the
Examiner’s decision to finally reject claims 65-70, 75, 77, 78, 83, 88, 89 and
113-115 under 35 U.S.C. § 103(a) as unpatentable over Jang (US 5,954,743,
issued Sep. 21, 1999) and Baker (US 6,558,422 B1, issued May 6, 2003) and
claims 65-69, 71, 75, 77, 78, 83-85, 88, 89 and 112-115 as unpatentable over
Jang and Ndondo-Lay (US 6,273,908 B1, issued Aug. 14, 2001).1 Claims 1-
64, 72-74, 76, 79-82, 86, 87, 90-111, and 115 have been canceled. We have
jurisdiction over this appeal under 35 U.S.C. § 6.2

THE INVENTION
The Appellant’s invention relates to intravascular stents that include a
plurality of cavities formed on a surface of the stent that are coated with a
restenosis inhibiting agent. Spec. 1, ll. 17-18 and figs. 4 and 5.
Claim 65 is representative of the claimed invention and reads as
follows:
65. An expandable stent, comprising:

a tubular structure including, a plurality of expansion

1 The rejection of claims 65-71, 75, 77, 78, 83-85, 88, 89 and 112-115 under
35 U.S.C. § 112, first paragraph, for failing to comply with the written
description requirement has been withdrawn by the Examiner. Advisory
Action p.2, mailed Dec. 5, 2008. Claim 115 has been cancelled by
Appellant, hence rendering moot the rejection of claim 115 under 35 U.S.C.
§ 102(e) as being anticipated by either Johnson (US 5,972,027, issued Oct.
26, 1999) or Yan (US 6,240,616 B1, issued Jun. 5, 2001). Id.
2 This is Appellant’s second appeal before the Board of Patent Appeals and
Interferences. In the first appeal (2007-3493, Decision mailed October 16,
2007), the rejection of claims 65-71, 75, 77, 78, and 89 was affirmed and the
rejection of claims 83-85 and 88 was reversed.
Appeal 2009-014456
Application 10/419,280
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struts, the expansion struts arranged in serpentine bands which
extend around the circumference of the stent, each serpentine
band having a plurality of cavities, each cavity extending all the
way through an expansion strut, the plurality of cavities
comprising a first group of cavities and a second group of
cavities, the first group of cavities having a first shape, the
second group of cavities having a second shape, the first shape
different than the second shape, and

a plurality of connector struts, the connector struts
connecting adjacent serpentine bands, each connector strut
having at least two cavities, each of the at least two cavities
extending all the way through the connector strut.

SUMMARY OF DECISION

We AFFIRM.

OPINION
Appellant presents essentially identical arguments with respect to the
rejection of independent claims 65 and 89 under 35 U.S.C. § 103(a) as
unpatentable over Jang and Baker and over Jang and Ndondo-Lay. See App.
Br. 10-14. As such, the following analysis applies equally to independent
claims 65 and 89 rejected over the combined teachings of Jang and Baker
and over Jang and Ndondo-Lay.
Each of independent claims 65 and 89 requires an expandable stent
including expansion struts having a plurality of cavities, wherein the
plurality of cavities include a first group of cavities having a first shape
different than a second group of cavities having a second shape. App. Br.,
Claims Appendix. Independent claim 89 further requires that expansion
struts include cavities of the first shape and connector struts include cavities
of the second shape. See Id.
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Appellant argues that although Baker and Ndondo-Lay disclose that
cavities 26 and 5, respectively, can have different shapes, neither Baker nor
Ndondo-Lay discloses that the different shaped cavities can be combined in
a single stent, as required by claims 65 and 89. App. Br. 10 and 12-13. In
response, the Examiner takes the position that both Baker and Ndondo-Lay
disclose a combination of different shaped cavities on a single stent. Ans. 4-
6. The Examiner further finds that the amount and rate of a drug released to
a particular area of the stent depends on the shape of the cavity. Id.
Appellant counters that neither Baker nor Ndondo-Lay discloses that there is
a correlation between the shape of the cavity and the amount of drug
released or the drug release rate. Reply Br. 3-4.
At the outset, we note that in an obviousness analysis, the relevant
inquiry is whether the claimed subject matter is obvious, not whether the
references teach, suggest, or motivate a particular claim feature to be
included from the prior art. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
419 (2007) (“The obviousness analysis cannot be confined by a formalistic
conception of the words teaching, suggestion, and motivation, or by
overemphasis on the importance of published articles and the explicit
content of issued patents.”). That the prior art cited by the Examiner does
not explicitly teach the use of different shaped cavities on a single stent does
not mean that selecting different shaped cavities on a single stent is non-
obvious. Perfect Web Tech., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009) (“while an analysis of obviousness always depends on
evidence … it also may include recourse to logic, judgment, and common
sense available to the person of ordinary skill that do not necessarily require
explication in any reference”). The prior art identified by the Examiner
clearly establishes several relevant facts:
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1. Jang discloses an expandable stent 10 including a tubular
structure having a plurality of expansion struts 28 arranged in serpentine
bands (through joining struts 30), which extend around the circumference of
the stent, and connector struts 38 that connect adjacent bands. See Jang,
figs. 1A, 2A and 2B. Jang fails to disclose cavities formed in the stent.
2. Baker discloses an indented structure (stent) 10 that includes
completely penetrating linear 26a and curved 26c shaped cavities in
combination on a single indented structure (stent) 10. See Baker, col. 3, ll.
56-65; col. 7, ll. 63-67; and figs. 1, 3 and 4. Baker further discloses
placement of the different shaped cavities 26, 26a, 26b, 26c and 26d on the
indented structure (stent) 10 for delivery of an amount of a biologically
active substance 34 to promote vascular communication between the
implanted indented structure (stent) 10 and surrounding tissue. See Baker,
col 2, ll. 21-23; col.3, ll. 8-18; col. 4, ll. 26-47; and figs. 1, 3 and 4.
3. Similarly, Ndondo-Lay discloses a stent 1 including different
shaped cavities 5 for holding a desired amount of a biologically active agent.
See Ndondo-Lay, col. 7, ll. 45-53 and figs. 3 and 4. Ndondo-Lay further
discloses that the biologically active agent can be an anti-thrombus agent
and/or an anti-restenosis agent for localization to the site of placement of the
intravascular stent. See Ndondo-Lay, col. 8, ll. 17-22.
With these relevant facts in mind, we find that one of ordinary skill in
the art would have had a desire to place different shaped cavities throughout
a stent (e.g., one shaped cavity on the expansion struts and a different shaped
cavity on the connector struts) to allow for modification of the amount of
biological active substance/agent delivered to the site of placement of the
stent. Consequently, we agree with the Examiner’s conclusion that it would
have been obvious to select one shaped cavity on one area of the stent
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(expansion struts) and a different shaped cavity on another area of the stent
(connector struts) for “delivering more drug where larger or wider [shaped]
cavities are present, thus providing accelerated treatment in areas of the
vessel where the patient needs it.” See Ans. 4-6; KSR, 550 U.S. at 421
(“When there is a design need or market pressure to solve a problem and
there are a finite number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known options within his or her
technical grasp”). As noted by the Examiner (see Ans. 4), Appellant has not
set forth any arguments or evidence that using different shaped cavities on a
single stent or having first shaped cavities on expansion struts and second
shaped cavities on connector struts provides unexpected results. See KSR at
421 (“If [pursuing known options] leads to the anticipated success, it is
likely the product not of innovation but of ordinary skill and common
sense.”). Accordingly, we find that the Examiner has provided a reason with
rational underpinning to support the conclusion of obviousness.
Lastly, with respect to the rejection of claim 65 over the combined
teachings of Jang and Baker, as far as we understand, Appellant appears to
argue that the combined teachings of Jang and Baker fail to disclose that
each connector strut has at least two cavities. App. Br. 11. See also App.
Br., Claims Appendix. We disagree with Appellant’s position because
Baker specifically discloses providing a plurality of cavities 26a, 26b, 26c
on a single indented (stent) structure 10 for delivery of an amount of a
biologically active substance 34 to promote vascular communication. See
Baker, col. 3, ll. 56-65; col. 7, ll. 63-67; and figs. 1, 3 and 4. Moreover, we
note that claim 65 merely requires that each connector strut have at least two
cavities, but does not limit the shapes of the cavities to being different from
each other. Hence, we agree with the Examiner that it would have been
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obvious for a person of ordinary skill in the art to provide a plurality of
cavities as taught by Baker to Jang’s stent, on the expansion struts and the
connector struts, in order to release drugs during implantation, that is, to
control the amount of biological active substance/agent delivered to the site
of placement of the stent. See Ans. 4.
Accordingly, for the foregoing reasons, the rejection of independent
claims 65 and 89 under 35 U.S.C. § 103(a) as unpatentable over Jang and
Baker and over Jang and Ndondo-Lay is sustained.
Appellant does not argue the rejection of dependent claims 66-71, 75,
77, 78, 83-85, 88 and 112-114 separate from independent claims 65 and 89.
App. Br. 11 and 14. As such, the rejection of claims 66-70, 75, 77, 78, 83,
88, 113, and 114 over the combined teachings of Jang and Baker and the
rejection of claims 66-69, 71, 75, 77, 78, 83-85, 88 and 112-114 over the
combined teachings of Jang and Ndondo-Lay are likewise sustained.

DECISION
The decision of the Examiner to reject claims 65-71, 75, 77, 78, 83-
85, 88, 89, and 112-114 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)(1)(iv).

AFFIRMED

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