Ex Parte Lundkvist et alDownload PDFPatent Trial and Appeal BoardMay 24, 201814094310 (P.T.A.B. May. 24, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 14/094,310 12/02/2013 27777 7590 05/29/2018 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 FIRST NAMED INVENTOR Andre S. Lundkvist 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. MIC5026USDIV2 9062 EXAMINER BRYANT, DAVID P ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 05/29/2018 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): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pairjnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDRES. LUNDKVIST and DAVID A. WATSON Appeal2017-008276 Application 14/094,310 Technology Center 3700 Before CHARLES N. GREENHUT, JAMES P. CALVE, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL Appellants 1 appeal under 35 U.S.C. § 134(a) from the Examiner's rejection2 of claims 4--13 under 35 U.S.C. § 103(a) as unpatentable over Akira3 (JP 10-66730 A; published Mar. 10, 1998), Boudjemline (US 2005/0283962 Al; published Dec. 29, 2005), Girton (US 8,052,744 B2; issued Nov. 8, 2011), and Johnson (US 2008/0147111 Al; published June 19, 2008). We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 Appellants identify the real party in interest as DePuy Synthes Products, Inc., an affiliate of Johnson & Johnson. Br. 2. 2 Appeal is taken from the Final Office Action dated January 25, 2016. 3 We refer to the English language translation of the Abstract, as provided in the record. Appeal2017-008276 Application 14/094,310 STATEMENT OF THE CASE Claim 4 is the sole independent claim on appeal. Claim 4, reproduced below, is exemplary of the subject matter on appeal, with disputed limitations italicized for emphasis. 4. A method for forming an intravascular stent, comprising: a) providing a cylindrical mandrel including a cylindrical main body having first and second opposing ends and a longitudinal axis, a first set of four orthogonally arranged pegs extending from the cylindrical main body at the first end of the cylindrical main body, a second set of four orthogonally arranged pegs extending from the cylindrical main body at the second end of the cylindrical main body, a first conical end cap mounted to said first end of said cylindrical main body, and a second conical end cap mounted to the second end of the cylindrical main body; b) winding a single composite wire about a first peg of the first set of pegs at the first end of the cylindrical mandrel to form a first end loop portion at a first end of a stent, and thereafter transitioning to form an intermediate circumferential loop; c) winding the composite wire about a first peg of the second set of pegs at the second end of the cylindrical mandrel to form a first end loop portion at a second end of the stent, and thereafter transitioning to form an intermediate circumferential loop; d) repeating steps b) and c) altematingly, beginning with one of steps b) and c ), to continue sequentially to form a plurality of intermediate circumferential loops between a plurality of end loop portions at the first and second ends of the cylindrical mandrel; e) placing a first free end and a second free end of said single composite wire in close proximity to each other in an intermediate tubular body portion of the stent; and t) capturing said first and second free ends together with a short segment of heat shrink tubing thereby forming a connection of the first and second free ends of the composite wire in the intermediate tubular body portion, said connection forming a continuation of one of said plurality of intermediate 2 Appeal2017-008276 Application 14/094,310 circumferential loops, to thereby prevent the free ends of the composite wire from extending away from the body of the stent. ANALYSIS Appellants argue claims 4--13 as a group. We select claim 4 as representative, with claims 5-13 standing or falling with claim 4. See 37 C.F.R. § 4I.37(c)(l)(iv). Regarding independent claim 4, the Examiner finds, inter alia, that Akira generally discloses a method comprising providing the claimed cylindrical mandrel. Final Act. 2-3 ( citing Akira ,r,r 25-27, Fig. 5). The Examiner relies on Boudjemline for teaching a mandrel comprising "at least one end cap mounted 20 to a main body 21" and on Girton for teaching "a composite wire to form a stent." Id. at 3 (citations omitted). Regarding steps ( e) and (f) of claim 4, the Examiner determines that Akira discloses "placing a first free end and a second free end of the single wire in close proximity to each other" (Ans. 3 ( citing Akira ,r,r 25-27, Fig. 1)) and "capturing the first and second free ends together by either welding, adhesion or hook structure" (id. ( citing Akira ,r 15) ). The Examiner also determines that "having the first and second free ends joined in an intermediate tubular body portion versus at the end as taught by Akira ... is an obvious matter of design choice as long as the first and second free ends are securely held together." Id. at 4. The Examiner relies on Johnson for teaching a similar device comprising a first free end 824 and a second free 836 end of a single composite wire in close proximity to each other wherein the first and second free ends are captured together with a short segment of heat shrink tubing 805 . . . thereby forming a connection of the first and second free ends of the 3 Appeal2017-008276 Application 14/094,310 composite wire, the connection forming a continuation of a loop, [ as claimed]. Final Act. 3--4 (Johnson ,r,r 177-178, Fig. 89C); see also Ans. 4. The Examiner reasons that it would have been obvious to have captured together the first and second free ends of the composite wire [ of Akira, as modified by Boudjemline and Girton] in an intermediate tubular body of the stent using a short segment of heat shrink tubing, in light of the teachings of Johnson ... , as is known in the art ... [to] prevent the free ends of the composite wire from extending away from the body of the stent, thereby avoiding damaging the artery in which the stent is used. Final Act. 4; see also Ans. 4. Alternatively, the Examiner reasons that it would have been obvious to capture the first and second free ends of the wire of Akira, as modified by Boudjemline and Girton, "using a short segment of heat shrink tubing," as taught by Johnson, "as a matter of obvious design choice." Ans. 4. The Examiner further determines that it would have been obvious "to substitute the welding taught by Akira for the shrink fit tubing taught by Johnson since Johnson teaches that both welding and shrink fit tubing are suitable techniques [for] connecting free ends of a wire or wires that are placed in close proximity to each other." Id. at 6. Appellants argue that paragraph 177 of Johnson does not teach "a first free end 824 and a second free end 836 of a single composite wire being captured together with a short segment of heat shrink tubing 805," as relied on by the Examiner. Br. 4. Appellants submit that paragraph 177 of Johnson teaches that a tissue anchor 810 is attached to the elongate body using a suitable attachment 805. The attachment 805 may be a crimp (as illustrated) or any other suitable technique for joining the 4 Appeal2017-008276 Application 14/094,310 fixation element 810 to the elongate body. Suitable techniques include, by way of non-limiting example, a crimp or other joining technique with a discrete detent, a swage or other joining technique with circumferential constriction, soldering, welding, brazing, shrink fit tubing, epoxy, multi-lumen collar where one wire is placed in each lumen and then bonded or melted together. Id. at 4--5. Appellants conclude that "[t]here is no teaching whatsoever that a first free end and a second free end of a single composite wire are placed in close proximity to each other in an intermediate tubular body portion of the stent and are then captured together with a heat shrink tube." Id. at 5. Appellants do not dispute the Examiner's findings regarding Akira's disclosure of welding the ends of the wires of a stent together, nor do Appellants dispute that it would have been an obvious design choice to do so in the intermediate portion of the stent. See Br. 4--5. Thus, Appellants' argument does not apprise us of error in the Examiner's determination that it would have been an obvious matter of design choice to have the first and second free ends of Akira's wire captured together in the intermediate tubular body portion, as set forth supra. 4 4 Notably, although the Specification discloses that "an intermediate tubular body portion [is] formed of a plurality of intermediate circumferential loops between the plurality of end loop portions" and that the intermediate tubular body portion has a certain diameter (Spec. ,r,r 12, 27), there is no disclosure in the Specification for locating the first and second free ends of the single composite wire in an intermediate tubular portion of the stent ( other than the written description support provided by depiction of such a location in Figure 4), or more particularly, the function served by doing so. See In re Gal, 980 F.2d 717,719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art). In this regard, the Specification discloses only that capturing free ends 32, 34 together with heat shrink tubing prevents them 5 Appeal2017-008276 Application 14/094,310 Further, a preponderance of evidence supports the Examiner's determination that Johnson teaches joining end 824 of elongate body length 822 to end 836 elongate body length 834, wherein elongate body lengths 822, 834 are segments of a wire (see, e.g., Johnson ,r,r 177-178, 182, 185, Figs. 89A, 89B, 89C), and wherein ends 824, 836 are joined by capturing the ends 824, 836 in a segment of heat shrink tubing (see, e.g., id. ,r 185, Figs. 89A, 89B). For example, referencing the same Figures 89A---C as relied on by the Examiner, Johnson discloses that [ fJirst, a segment of heat shrink tubing is sufficiently long to cover the length of the elongate body included in the joining process is placed on the elongate bodies 830, 834 over the ends 832, 836, respectively, of FIG. 89B. Next, the ends 832, 836 in FIG. 89B are joined to the ends 824, 826 in FIG. 89A. Thereafter, the heat shrink tubing segments are advanced over the joined area and heated. As the heat shrink tubing segment is heated, it melts around the joined area and provides a smooth surface that seals the area where the end 826 joins end 832 and end 824 joins end 836. Id. ,r 185. Moreover, Johnson consistently discloses that welding and heat shrink tubing are two known alternatives for joining the ends of wires. See, e.g., Johnson ,r 186 ("The joint 805 could be used to join elongate bodies together as suggested by the embodiments illustrated in FIGS .... 89A, 89B" wherein "techniques used to create the joint 805 include ... welding, . . . shrink fit tubing."); see also id. ,r 177. Appellants' argument fails to address the Examiner's findings with respect Akira and Johnson, individually, or the Examiner's reasoning for combining Akira and Johnson to arrive at the claimed invention (for from extending away from the body of the stent (id. ,r 28) without teaching that the capture must occur at an intermediate portion of the stent to do so. 6 Appeal2017-008276 Application 14/094,310 example, that it would be obvious to substitute the process for joining the ends of wires as taught in Akira (i.e., welding) with the process for joining the ends of wires as taught in Johnson (i.e., heat shrink tubing)). Moreover, Johnson teaches that heat shrink tubing melts around the joined area and provides a smooth surface that seals the area where the ends are joined. See Johnson ,r 185. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Keller, 642 F.2d 413,425 (CCPA 1981). Accordingly, we sustain the Examiner's rejection of claim 4, and claims 5-13 fall therewith. DECISION The Examiner's decision rejecting claims 4--13 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)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation