Ex Parte Jordan et alDownload PDFPatent Trial and Appeal BoardSep 16, 201613887813 (P.T.A.B. Sep. 16, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/887,813 05/06/2013 11050 7590 09/20/2016 SEAGER, TUFTE & WICKHEM, LLP 100 South 5th Street Suite 600 Minneapolis, MN 55402 FIRST NAMED INVENTOR Gary A. Jordan 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2001.1426102 7693 EXAMINER MATHEW, SEEMA ART UNIT PAPER NUMBER 3738 NOTIFICATION DATE DELIVERY MODE 09/20/2016 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): BSC.USPTO@stwiplaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte GARY A. JORDAN and RONALD A. SAHATJIAN Appeal2015-000957 Application 13/887,813 Technology Center 3700 Before EDWARD A. BROWN, WILLIAM A. CAPP, and ARTHUR M. PESLAK, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEivIENT OF THE CASE Gary A. Jordan and Ronald A. Sahatjian (Appellants) appeal under 35 U.S.C. § 134(a) from the Examiner's decision rejecting claims 1-9. We have jurisdiction under 35 U.S.C. § 6(b ). We REVERSE. CLAIMED SUBJECT MATTER Claim 1, reproduced below, is representative of the claimed subject matter: 1. A radially-expandable implant for implantation in a bodily passageway, the implant comprising a stent having a main body extending from an inside surface to an outside surface and from a first end to a second end thereof; the main body comprising a shape-memory polymer and being expandable from an initial Appeal2015-000957 Application 13/887,813 unexpanded state to an expanded state, wherein the outside surface of the main body forms an outwardly extending geometric pattern comprising helical or annular rings. Appeal Br. 11 (Claims App.) (emphasis added). REJECTIONS I. Claims 1--4 are rejected under 35 U.S.C. § 102(b) as anticipated by Gianotti (US 5,993,483, issued Nov. 30, 1999). II. Claims 5 and 6 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gianotti and Banas (US 6,004,348, issued Dec. 21, 1999). III. Claims 5, 8, and 9 are rejected under 35 U.S.C. § 103(a) as unpatentable over Gianotti and Quigley (US 2007/0208421 Al, published Sept. 6, 2007). IV. Claim 7 is rejected under 35 U.S.C. § 103(a) as unpatentable over Gianotti and Martakos (US 5,897 ,587, issued Apr. 27, 1999). ANALYSIS Rejection I The Examiner finds that Gianotti discloses a stent having a main body 2, 3 comprising a shape-memory polymer, such as polyurethane or polyethylene. Final Act. 2-3 (citing Gianotti, col. 4, 11. 52---60). Gianotti states that "[t]he wires 2 and 3 may be made of a metallic material, e.g. stainless steel, which may be filled with a radiopaque core, or made of a thermoplastic polymer, such as polyesters, polyurethanes, polycarbonates, polysulphides, polypropylene, polyethylene or polysulphonates." Gianotti, col. 4, 11. 52-57. The Examiner notes that Appellants disclose that polyethylene and polyurethane are suitable shape memory polymers. Final Act. 2 (citing Spec. i-fi-120-21 ). Appellants' Specification describes that stent 2 Appeal2015-000957 Application 13/887,813 104 comprises a shape memory polymer (SMP), and lists examples of SMPs that can be used, including polyethylene and polyurethane. Spec. 4, 1. 22-5, 1. 1. The Examiner determines that "since the same material is disclosed then its intended use is also inherently present, such that Gianotti' s implant formed from polyurethane and/or polyethylene is capable of exhibiting shape memory characteristics." Final Act. 2 (emphasis added). In contrast, Appellants contend that Gianotti does not disclose a main body comprising a shape-memory polymer. Appeal Br. 6. Appellants contend that Gianotti does not mention the term "shape memory," or any synonymous language, and thus, the rejection "appears to rely on inherency." Id. at 6-7. Appellants assert that "simply because Gianotti discloses materials that can be used as or in shape-memory polymers does not necessarily mean that Gianotti's disclosure of such materials inherently have shape-memory properties. Mere capability is insufficient to establish a rejection on the basis of inherency." Id. at 7. Appellants also assert that: It is known that shape-memory properties are not inherent in single polymers. Adreas Lendlein and Steffen Kelch, Shape- Memory Polymers, 2002, 41 Angew. Chem. Int. Ed. 2034, 2035 (June 17, 2002) [hereafter, "Lendlein"]. Indeed, "[t]he shape memory effect is not related to a specific material property of single polymers; it rather results from a combination of the polymer structure and the polymer morphology together with the applied processing and programming technology." Id. Appeal Br. 7. The Examiner responds that: both of the devices (prior art and applicant's device) possess the same utility and employ the same polymeric material therefore, the characteristic of the polymer, to exhibit a shape memory effect, can be presumed to be inherent since the composition, 3 Appeal2015-000957 Application 13/887,813 structure and function are the same. Therefore, Gianotti's implant having a main body formed from polyurethane and/or polyethylene is capable of exhibiting a shape memory characteristics. Ans. 5 (emphasis added). Appellants' contentions are persuasive. A reference inherently discloses a claim element "if that missing characteristic is necessarily present, or inherent, in the single anticipating reference." Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1377 (Fed. Cir. 2003) (citation omitted) (emphasis added). "Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient." Therasense, Inc. v. Becton, Dickinson & Co., 593 F.3d 1325, 1332 (Fed. Cir. 2010) (citation omitted). The Examiner has the burden of providing reasonable proof that a claim limitation is an inherent characteristic of the prior art. In re Best, 562 F.2d 1252, 1254--55 (CCP A 1977). If the Examiner meets this burden, the burden of proof then shifts to Appellants "to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on." Best, 562 F.2d at 1254--55. Gianotti does not explicitly describe that any of the listed polymers used to make wires 2, 3 is a shape memory polymer. See Gianotti, col. 4, 11. 55-57. Furthermore, Appellants' Specification does not describe that all polyethylene and polyurethane materials are shape memory polymers. Rather, the Specification describes that polyethylene and polyurethane shape memory polymers can be used in stent 104. Spec. 4, 1. 22-5, 1. 1. To the extent it is the Examiner's position that all polyethylenes and polyurethanes presumably exhibit shape memory effects based merely on 4 Appeal2015-000957 Application 13/887,813 their general chemical composition, the Examiner has provided no evidence that supports that position. To the contrary, Lendein discloses that the shape memory effect exhibited by shape-memory polymers "results from a combination of the polymer structure and the polymer morphology together with the applied processing and programming technology." See Lendlein, p. 235 (emphasis added). Thus, according to Lendlein, the shape memory effect is not affiliated merely with composition. The Examiner has not provided reasonable proof that either polyethylene or polyurethane disclosed in Gianotti satisfies a combination of the factors described in Lendlein such that it would necessarily exhibit a shape memory effect. For example, Gianotti's general disclosure of polyethylene and polyurethane provides no information about the combination of factors that, according to Lendlein, would determine whether either polymer exhibits a shape memory effect. Absent such evidence and reasonable proof, the burden of proof has not been shifted to Appellants to prove that Gianotti's generally-disclosed polyethylene and polyurethane are not shape memory polymers. Best, 562 F.2d at 1254--55. For the above reasons, we do not sustain the rejection of claim 1 and dependent claims 2--4 as anticipated by Gianotti. Rejections II-IV The Examiner's application of Banas to the rejection of claims 5 and 6; Quigley to claims 5, 8, and 9; and Martakos to claim 7, does not cure the deficiencies of Gianotti for claim 1. See Final Act. 3-5. Accordingly, we do not sustain the rejections of claims 5 and 6 as unpatentable over Gianotti and Banas; claims 5, 8, and 9 as unpatentable over Gianotti and Quigley; and claim 7 as unpatentable over Gianotti and Martakos. 5 Appeal2015-000957 Application 13/887,813 DECISION We REVERSE the rejections of claims 1-9. REVERSED 6 Copy with citationCopy as parenthetical citation