Ex Parte Laguna

Patent Trial and Appeal Board

Aug 22, 2016

11199717 (P.T.A.B. Aug. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
111199,717 08/09/2005 Alvaro J. Laguna
34018 7590 08/24/2016
GREENBERG TRAURIG, LLP
77 WEST WACKER DRIVE
SUITE 3100
CHICAGO, IL 60601-1732
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.
44 l 78.02US2 2834
EXAMINER
BUI, VYQ
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/24/2016 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):
j arosikg@gtlaw.com
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PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALVARO J. LAGUNA
Appeal2014-007718
Application 11/199,717
Technology Center 3700
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
AMANDA F. WIEKER, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Alvaro J. Laguna ("Appellant") 1 appeals under 35 U.S.C. § 134 from
the Examiner's decision rejecting claims 41-51, 53, 57, 58, 61, 84--99, and
101-103 2 in this application. The Board has jurisdiction over the appeal
under 35 U.S.C. § 6(b ).
We REVERSE.
1 The Appeal Brief identifies DSM IP ASSETS B.V. as the real party in
interest. Appeal Br. 2.
2 Appellant's Claims Appendix includes claim 62. Appeal Br. 15 (Claims
App.). However, claim 62 has been withdrawn from consideration. See
Ans. 2; Non-Final Act. (mailed Apr. 10, 2012), 2. Claim 62 is therefore not
before us on appeal.
Appeal2014-007718
Application 11/199,717
CLAIMED SUBJECT MATTER
Claims 41 and 84 are independent. Claim 41 recites:
41. A method for making an article for use in lining the
interior of a conduit, comprising:
using a polyethylene material to form a frameless tube
construct; and
providing the polyethylene material of the frameless tube
construct with a treatment whereupon at least a portion of the
polyethylene material is rendered circumferentially distensible,
whereupon at least a corresponding portion of the frameless tube
construct will experience greater distention in response to an
applied distention force as compared to a frameless tube
construct formed using an untreated polyethylene material, and
whereupon, after distention and removal of the applied distention
force, the at least a portion of the frameless tube construct will
experience foreshortening of approximately 5 percent or less of
a pre-distended length of the portion of the frameless tube
construct and recoil of approximately 5 percent or less of a
distended diameter of the portion of the frameless tube construct.
Appeal Br. 13 (Claims App.). Claim 84 recites:
84. A method for making an article for use m lining the
interior of a conduit, comprising:
using a polyethylene material to form a frameless tube
construct; and
providing the polyethylene material with a treatment
whereupon the frameless tube construct is rendered distensible
with minimal foreshortening and recoil such that the frameless
tube construct will conform to the interior of the conduit without
a need for assistance from any supportive, mechanical device
being affixed to the polyethylene material.
Id. at 15 (Claims App.).
2
Appeal2014-007718
Application 11/199,717
REJECTIONS ON APPEAL 3
Claims 41-50, 61, 84--91, 98, 99, 101, and 103 stand rejected under
35 U.S.C. § 102(b) as anticipated by Vonesh (US 6,336,937 Bl, iss. Jan. 8,
2002), or in the alternative, under 35 U.S.C. § 103(a) as unpatentable over
Vonesh. 4
Claim 51 stands rejected under 35 U.S.C. § 103(a) as unpatentable over
Vonesh and Vallana (US 5,370,684, iss. Dec. 6, 1994).
Claims 49, 50, 53, 57, 58, 92, 93, and 95-97 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Vonesh and Pinchuk (US 5,053,048,
iss. Oct. 1, 1991). 5
Claim 102 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over Vonesh and Weinberger (US 5,924,973, iss. July 20, 1999).
ANALYSIS
A. Anticipation by Vonesh
Claims 41-50, 61, 101, and 103
In rejecting independent claim 41 as anticipated by Vonesh, the
Examiner finds Vonesh discloses "frameless tube" "22 I 26 I 36" made of
polyethylene, for lining the interior of "conduit" or stent 20. Final Act. 3
3 The Examiner has withdrawn the rejection of claims 41, 4 7, and 84 under
35 U.S.C. § 112, second paragraph, as indefinite. Ans. 6.
4 The Examiner's listing of claims subject to this rejection does not include
claims 42, 49, 50, and 90 (Final Act. 3), but the underlying analysis
considers those four claims (id.), so we include them here.
5 The Examiner's listing of claims subject to this rejection includes
claims "85-97," but from context it appears that was meant to be "95-97."
See Final Act. 4--5; compare Appeal Br. 14--15 (claims 49, 50, 53, 57, and
58) with id. at 16-17 (claims 92, 93, and 95-97).
3
Appeal2014-007718
Application 11/199,717
(citing Vonesh, Figs. 1--4, 7:9-25, 9:9-32, 10:58---64). The Examiner also
finds Vonesh's frameless tube 22 I 26 I 36 is thermally treated as it is
attached to stent 20, and is then "distensible with minimal [length]
shortening and [diameter] recoil." Id. (citing Vonesh, 9:9-16, 7:9-25).
Further according to the Examiner, after the thermal treatment, "frameless
tube 22 I 26 I 36 has ... transformed into tube 10." Id. The Examiner
determines V onesh discloses the claimed length foreshortening of
approximately 5% or less, in that Vonesh indicates a length foreshortening
"of a treatedframeless tube 22 I 26 I 36 or tube 10 being less than 3%." Id.
(emphasis modified) (citing Vonesh, 7: 13-25). The Examiner then states
Vonesh "does not explicitly disclose" the claimed diameter recoil of
approximately 5% or less, and provides reasoning as to why (in the
Examiner's view) Vonesh's "frameless tube 22 I 26 I 36 or tube 10"
nonetheless exhibits the claimed diameter recoil. Id. at 3--4.
Appellant argues Vonesh fails to disclose treating "aframeless tube
construct" as claimed (emphasis added) to exhibit, after distention, the
claimed length foreshortening and diameter recoil. Appeal Br. 6-7.
Appellant contends Vonesh discloses "a device 10 comprised of a stent
frame 20 (made from a 'memory' material such as plastic or steel), a
polymer sleeve element 26, and a distensible sleeve element 36." Id. at 7
(emphasis added) (citing Vonesh, Fig. 4, 8:65-10:19). According to
Appellant, while Vonesh may disclose heat treating the assembled device 10
(including stent frame 20), Vonesh does not disclose that after such heat
treatment, either of the frameless tubes 26 and 3 6 "by itself' has the claimed
length foreshortening and diameter recoil. Id. at 7-8. Appellant further
contends the length foreshortening of less than 3 % disclosed by Vonesh
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Appeal2014-007718
Application 11/199,717
relates to device 10 (including stent frame 20), and therefore is "the very
antithesis of' claim 41, which concerns length foreshortening of a frameless
tube. Id. at 8.
The Examiner answers that Vonesh "discloses that after the treatment,
when the new stent-graft combination of frameless tube construct 36 and
stent frame 20 is expanded, the stent-graft combination" will shorten in
length by less than 3%. Ans. 7 (emphasis added) (citing Vonesh, 7:9--25).
Further according to the Examiner:
Of course, sleeve 36 which is bonded to stent 20 will also shorten
less than 3 % as recited in the claims. Please, notice that there is
nothing in claim 41 to exclude a treatment process of Vonesh 's
sleeve 26 or 36 to be bonded to stent 20 ....
Id. at 7-8.
We conclude the Examiner errs in finding V onesh discloses a
frameless tube construct exhibiting the length foreshortening and diameter
recoil recited in claim 41. It may very well be that Vonesh's graft 22,
graft 26, and distensible sleeve 36 (or combinations thereof) are each a
frameless tube construct. See Vonesh, 6:36-44 (describing graft 22 as
shown in Fig. 2), 9:9--19 and 9:57---61 (describing graft 26 and distensible
sleeve 36 as shown in Fig. 4). Nonetheless, to the extent Vonesh at all
describes a treatment and succeeding length foreshortening or diameter
recoil after distention, it is always in connection with frameless tube
construct 22 I 26 I 36 after it has been attached to stent frame 20 to form
framed tubular device 10. 6 Id. at 6:37--46, 6:63-7:25, 8:60-64. There is no
6 The Examiner does not dispute Appellant's contention that a stent is a
"frame" in the context of the claimed "frameless" tube construct. We,
5
Appeal2014-007718
Application 11/199,717
disclosure of subjecting frameless tube construct 22 I 26 I 36 to a treatment
without stent frame 20, or describing what properties frameless tube
construct 22 I 26 I 36 might have after such treatment without stent
frame 20.
The Examiner concludes claim 41 does not exclude subjecting
frameless tube construct 22 I 26 I 36 to a treatment in combination with stent
frame 20, such that the resulting framed combination exhibits the claimed
length foreshortening and diameter recoil. Ans. 7-8. We, however, agree
with Appellant's contention that attaching frameless tube construct 22 I 26 I
36 to stent frame 20 to form framed tubular device 10 "destroys the
'frameless' aspect of' frameless tube construct 22 I 26 I 36 (Reply Br. 3),
such that the disclosed length foreshortening of device 10 concerns a framed
tube construct rather than a frameless tube construct. Such disclosure,
therefore, has little to do with the claimed subject matter.
The Examiner cites dependent claim 61 as support for concluding its
parent claim 41 does not exclude bonding the frameless tube construct to a
frame such as a stent. Ans. 2. However, claim 61 recites associating the
frameless tube construct with a stent frame "after treating the polyethylene
material" of the frameless tube construct, not before the treatment is applied.
Appeal Br. 15 (Claims App.) (emphasis added). We agree with Appellant's
argument that claim 61 therefore does not support the Examiner's
conclusion that the length foreshortening and diameter recoil properties of a
likewise, agree with Appellant on this point. See Appeal Br. 15 (Claims
App.) (emphasis added) (claim 61, depending from claim 41, specifies
"associating the frameless tube construct with a stent frame after treating the
polyethylene material"); Spec. 6:22-28, 8:3--4.
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Appeal2014-007718
Application 11/199,717
frameless tube construct recited in claim 41 may be met by a framed tube
construct. See Reply Br. 3--4.
In short, the reported distention and recovery ofVonesh's device 10
(including stent frame 20) does not correspond to the claimed distention and
recovery of a frameless tube construct. Further, the presence ofVonesh's
stent frame 20 within device 10 as the device undergoes distention and
recovery, makes it difficult to conclude how frameless tube construct 22 I
26 I 36 would react under similar conditions without stent frame 20.
Vonesh, 6:63-7:25. The Examiner's rejection does not contain sufficient
technical reasoning to support a finding that frameless tube construct 22 I
26 I 36 would exhibit the claimed length foreshortening and diameter recoil
after being distended without stent frame 20. Final Act. 3--4, Ans. 7-8.
For the foregoing reasons, we do not sustain the rejection of claim 41
and its dependent claims 42-50, 61, 101, and 103 as anticipated by Vonesh.
Claims 84-91, 98, and 99
In rejecting independent claim 84 as anticipated by Vonesh, the
Examiner finds Vonesh discloses frameless tube construct "22 I 26 I 36"
that, as claimed, "will conform to the interior of the conduit [i.e. stent 20]
without a need for assistance from any supportive, mechanical device being
affixed to the polyethylene material" of the construct. Final Act. 3. The
Examiner particularly reasons Vonesh's sleeve 26 has diameter 32 which is
"about the same as" diameter 30 of stent 20. Ans. 10 (citing Vonesh,
Fig. 4 ). On that basis, the Examiner concludes graft 26 will substantially
conform to the interior of stent 20 without any supportive, mechanical
device being affixed to the polyethylene material of graft 26. Id.
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Appeal2014-007718
Application 11/199,717
Appellant argues Vonesh fails to disclose treating "aframeless tube
construct" as claimed (emphasis added), so that the construct will conform
to the interior of stent 20 without a need for assistance from a supportive
device. Appeal Br. 9--10. Appellant's underlying analysis is substantially
the same as for claim 41, discussed above. Id.
We conclude the Examiner errs in finding V onesh discloses frameless
tube construct 22 I 26 I 36 will "conform to the interior" of stent 20 "without
a need for assistance from any supportive, mechanical device being affixed
to" the frameless tube construct, as recited in claim 84. Vonesh discloses a
first embodiment in which graft 22 is "attached to" and thereby conforms to
stent frame 20 (Vonesh, Fig. 2, 6:37--40), and a second embodiment in
which graft 26 and distensible sleeve 36 are both "attached to" or "bonded
to" and thereby conform to stent frame 20 (id. at Fig. 4, 8:60-64, 10:20-23).
Such a conformance via attachment or bonding between frameless tube
construct 22 I 26 I 36 and stent 20 fails to indicate that the frameless tube
construct will conform to stent 20 without the need for "being affixed" to a
"supportive, mechanical device" (i.e., the stent 20 itself).
We appreciate that Figure 4 of Vonesh shows maximum diameter 30
of stent 20 is about the same as maximum diameter 32 of graft 26. See also
Vonesh 9:5-8, 9:36-38, 9:53-56 (all three diameters 30, 32, and 34 are
"similar in magnitude"). However, that does not indicate graft 26 will
conform to the interior of stent 20 if graft 26 is inserted into stent 20 without
any attachment between the two. The written description of Vonesh
indicates graft 26 "serve[ s] to limit the ultimate extent of expansion of the
device 1 O" by "resist[ing] any radial expansion beyond maximum
dimension 32." Id. at 9:33-39 (emphases added). That written description
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Appeal2014-007718
Application 11/199,717
suggests maximum diameter 32 of graft 26 is in fact somewhat less than
maximum diameter 30 of stent 20, in order that the radial expansion of the
combined part 28 is restricted as described. Id. at 9:48-56. Thus, a
preponderance of evidence does not support the Examiner's finding that
graft 26 will conform to the interior of stent 20 without the assistance
provided by attaching graft 26 to stent 20.
For the foregoing reasons, we do not sustain the rejection of claim 84
and its dependent claims 85-91, 98, and 99 as anticipated by Vonesh.
B. Obviousness based on Vonesh
As an alternative to the rejection of claims 41-50, 61, 84--91, 98, 99,
101, and 103 as anticipated by Vonesh, the same claims stand rejected as
unpatentable over Vonesh. The Examiner finds Vonesh "does not explicitly
disclose" the claimed diameter recoil of approximately 5% or less. Final
Act. 3. That finding is followed by reasoning as to why, in the Examiner's
view, Vonesh's frameless tubes nonetheless exhibit the claimed diameter
recoil. Id. at 3--4. There is no reasoning with rational underpinnings for
why it would have been obvious to modify Vonesh's frameless tube to
exhibit the claimed diameter recoil, or to change Vonesh's disclosed
technology in any way. Id.; Ans. 8-9 (claim 41), 10-11 (claim 84). Thus,
there is no substantive difference between the anticipation rejection and the
alternative obviousness rejection. For the reasons provided above
concerning the anticipation rejection, we do not sustain the rejection of
claims 41-50, 61, 84--91, 98, 99, 101, and 103 as unpatentable over Vonesh.
C. Obviousness based on Vonesh and Vallana, Pinchuk, or Weinberger
The Examiner's additional consideration of dependent claims 49, 50,
51, 53, 57, 58, 92, 93, 95-97, and 102, in light of the combination ofVonesh
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Appeal2014-007718
Application 11/199,717
with Vallana, Pinchuk, or Weinberger, does not correct the deficiencies of
Vonesh in relation to independent claims 41 and 84 noted above. See Final
Act. 4--5. Therefore, we do not sustain the various obviousness rejections of
these claims.
DECISION
The Examiner's decision to reject claims 41-51, 53, 57, 58, 61,
84--99, and 101-103 is reversed.
REVERSED
10