Ex Parte Nash

Patent Trial and Appeal Board

Mar 6, 2018

13935261 (P.T.A.B. Mar. 6, 2018)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/935,261 07/03/2013 Stephen Nash C4644.USU1 1040
28390 7590 03/08/2018
MEDTRONIC VASCULAR, INC.
IP LEGAL DEPARTMENT
3576 UNOCAL PLACE
SANTA ROSA, CA 95403
EXAMINER
ZHU, WEIPING
ART UNIT PAPER NUMBER
1733
NOTIFICATION DATE DELIVERY MODE
03/08/2018 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):
rs. vasciplegal @ medtronic .com
medtronic_c v_docketing @ cardinal-ip. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN NASH
Appeal 2017-002972
Application 13/935,261
Technology Center 1700
Before MICHAEL P. COLAIANNI, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.
INGLESE, Administrative Patent Judge.
DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1-21. We have jurisdiction over
this appeal under 35 U.S.C. § 6(b).
We REVERSE.
STATEMENT OF THE CASE
Appellant claims a method of forming an endovascular stent for
delivering a therapeutic material within a vessel. Claims 1 and 17 illustrate
the subject matter on appeal and are reproduced below:
1 Appellant is the Applicant, Medtronic Vascular, Inc., which, according to
the Appeal Brief, is the real party in interest. Appeal Brief filed February
19, 2016 (“Br.”), 3.
Appeal 2017-002972
Application 13/935,261
1. A method of forming an endovascular stent for delivering
a therapeutic material within a vessel comprising the steps of:
positioning a tubular core structure in a mold, wherein
the tubular core structure has a pattern around which at least a
portion of the endovascular stent is to be formed;
placing metal particles in the mold around the tubular
core structure',
applying a force to press together the metal particles and
create a solid wall metallic tubular component, wherein the
tubular core structure is encased within the solid wall of the
metallic tubular component',
sintering the metallic tubular component to further
solidify the component; and
removing portions of the solid wall of the metallic
tubular component to form at least a portion of the
endovascular stent in the pattern of the tubular core structure.
17. A method of forming an endovascular stent for delivering
a therapeutic material within a vessel comprising the steps of:
coating with metal particles a tubular core structure
having a stent pattern around which the endovascular stent is to
be shaped;
disposing the coated tubular core structure within a
mold',
applying a force to press together the metal particles
coated on the tubular core structure to create a metallic tubular
component having a solid wall within which the tubular core
structure is disposed;
sintering the metallic tubular component; and
forming the metallic tubular component into the
endovascular stent by cutting around the stent pattern of the
tubular core structure and removing portions of the solid wall of
the metallic tubular component.
Br. 7, 9 (Claims Appendix) (emphasis added).
The Examiner sets forth the rejection of claims 1-21 under 35 U.S.C.
§ 103 as unpatentable over Birdsall et al. (US 2011/0008405 Al, published
January 13, 2011) in the Final Office Action entered October 19, 2015
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Application 13/935,261
(“Final Act.”), and maintains the rejection in the Examiner’s Answer entered
June 29, 2016 (“Ans.”).
DISCUSSION
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejection of
claims 1-21 under 35 U.S.C. § 103 for the reasons set forth below.
We need consider only independent claims 1 and 17 because the
remaining claims on appeal depend from these claims.
The Examiner finds that Birdsall discloses a method of forming a
stent comprising providing a core wire with a tubular outer member and a
tubular central core member having a structure of a pattern around which at
least a portion of a stent is to be formed, which the Examiner finds “would
meet the limitation of the solid wall metallic tubular component as claimed
in claims 1 and 17.” Final Act. 2-3 (citing Birdsall Abstract, 28, 31, 35-
38, 58.) The Examiner finds that Birdsall discloses burning out the core
member to form a continuous channel in the core wire, which the Examiner
finds “would meet the limitation of the sintering step as claimed.” Id. The
Examiner finds that Birdsall discloses removing portions of the outer
member of the core wire to form the core wire into a stent, such that a
continuous core structure is captured within a wall of the stent. Final Act. 3
(citing Birdsall Abstract, 28, 31, 35-38, 59.)
The Examiner finds that Birdsall discloses that the core wire may be
formed by any method known in the art “without specifying the powder
metallurgy method as claimed.” Final Act. 3 (citing Birdsall ^ 31). The
Examiner concludes that “it would have been obvious to one of ordinary
skill in the art before the effective filing date of the claimed invention to use
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Application 13/935,261
the powder metallurgy method as claimed to make a core wire of Birdsall []
with an expectation of success because Birdsall [] discloses the same utility
of any methods of making a core wire known in the art.” Final Act. 3 (citing
MPEP § 2144.05 I).
The Examiner thus appears to assert that the steps recited in claim 1 of
positioning a tubular core structure in a mold, placing metal particles in the
mold around the tubular core structure, and applying a force to press
together the metal particles and create a solid wall metallic tubular
component having a solid wall within which the tubular core structure is
encased, are powder metallurgy process steps that were known in the art at
the time of Appellant’s invention, and could be used for making a core wire
as disclosed in Birdsall. The Examiner also appears to assert that the steps
recited in claim 17 of coating particles of a tubular core structure with metal,
disposing the coated tubular core structure within a mold, and applying a
force to press together the metal particles coated on the tubular core
structure to create a metallic tubular component having a solid wall within
which the tubular core structure is disposed, are also powder metallurgy
process steps that were known in the art at the time of Appellant’s invention,
and could be used for making a core wire as disclosed in Birdsall.
However, the Examiner does not provide any objective evidence to
support this position, which Appellant challenges, arguing that “the record
lacks any articulation by the Office as to which words in [the cited portions
of] Birdsall... or anywhere else are considered to disclose the tubular core
structure, the mold, the application of compression force, or any of the other
features of claims 1 and 17.” Br. 5 (emphasis added). In response to this
argument, rather than providing objective evidence from scientific and
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Application 13/935,261
technical literature to support the Examiner’s position that it would have
been obvious to make Birdsall’s core wire using the steps recited in claim 1,
the Examiner asserts in the Answer that “[t]he steps as claimed are well-
known in the art of making a core wire by powder metallurgy.” Ans. 4.
Although the Examiner may take official notice of technical facts
outside of the record to fill gaps that might exist in the evidentiary showing
necessary to satisfy the Examiner’s burden of establishing prima facie
obviousness, such asserted technical facts must be “capable of such instant
and unquestionable demonstration as to defy dispute.” In reAhlert, 424
F.2d 1088, 1091 (CCPA 1970). However, “[assertions of technical facts in
areas of esoteric technology must always be supported by citation to some
reference work recognized as standard in the pertinent art. . . [a]negations
concerning specific ‘knowledge’ of the prior art, which might be peculiar to
a particular art, should also be supported.” Ahlert, 424 F.2d at 1091. The
Examiner’s official notice that “[t]he steps as claimed are well-known in the
art of making a core wire by powder metallurgy,” although not denominated
as such, is improper because powder metallurgy methods for making a core
wire for a stent concern facts in an esoteric technology, and concern
knowledge peculiar to that technology.
Because the Examiner improperly relies on official notice, and in so
doing, does not provide evidence demonstrating that the method steps
recited in claims 1 and 17 were actually known in the art at the time of
Appellant’s invention, the Examiner’s rejection of claims 1 and 17 lacks a
sufficient factual basis to support the legal conclusion of obviousness. We
accordingly do not sustain the Examiner’s rejection of claims 1-21 under
35U.S.C. § 103.
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DECISION
We reverse the Examiner’s rejection of claims 1-21 under 35 U.S.C.
§ 103.
REVERSED
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