11649497 (B.P.A.I. Oct. 28, 2011)

Ex Parte Pacetti

Board of Patent Appeals and InterferencesOct 28, 2011

11649497 (B.P.A.I. Oct. 28, 2011)

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. 11/649,497 01/03/2007 Stephen D. Pacetti 050623.00814 7052 45159 7590 10/31/2011 SQUIRE, SANDERS & DEMPSEY (US) LLP 275 BATTERY STREET, SUITE 2600 SAN FRANCISCO, CA 94111-3356 EXAMINER BOWMAN, ANDREW J ART UNIT PAPER NUMBER 1717 MAIL DATE DELIVERY MODE 10/31/2011 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte STEPHEN D. PACETTI ____________ Appeal 2010-005961 Application 11/649,497 Technology Center 1700 ____________ Before BRADLEY R. GARRIS, ADRIENE LEPIANE HANLON, and PETER F. KRATZ, Administrative Patent Judges. KRATZ, Administrative Patent Judge. DECISION ON APPEAL This is a decision on an appeal under 35 U.S.C. § 134 from the Examiner’s final rejection of claims 1, 2, and 5. We have jurisdiction pursuant to 35 U.S.C. § 6. Appeal 2010-005961 Application 11/649,497 2 Appellant’s claimed invention is directed to a method of coating an implantable medical device, such as a stent, by applying first and second coating compositions having different relative concentrations of a first substance to a second substance, wherein the second composition is applied to the device before all of the solvent has been removed from the first composition on the device. Claim 1, the sole independent claim on appeal, is illustrative and reproduced below: 1. A method of coating an implantable medical device, comprising: applying a first composition onto an implantable medical device, the first composition including a first substance, a second substance and at least one solvent; and applying a second composition onto the device before all of the solvent has been removed from the first composition on the device, the second composition having a different relative concentration of the first substance to the second substance as compared to the first composition. The Examiner relies on the following prior art references as evidence in rejecting the appealed claims: Berg 5,464,650 Nov. 7, 1995 Schall US 6,645,552 B1 Nov. 11, 2003 Claims 1, 2, and 5 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Berg in view of Schall. We reverse the stated rejection. Berg discloses a stent coating process wherein solvent is evaporated between coats; in other words, a coating layer is allowed Appeal 2010-005961 Application 11/649,497 3 to dry before application of another coating layer (col. 2, ll. 44-47, col. 4, ll. 19-3; claim 1). In this regard, the Examiner determined that “Berg fails to teach where the solvent is not removed between coats” (Ans. 3). The Examiner predicates the maintained § 103(a) rejection on a proposed modification of Berg’s stent coating method – by applying a second coat before the solvent is removed. The Examiner bases this modification of Berg on the additional teachings of Schall with respect to wet-on-wet application of two or more separate coating layers in forming a thick aqueous coating comprising a quick setting binder, which application technique has a disclosed shorter drying time than would have been required if the same thickness of coating were applied in one application step. In addition, the Examiner further asserts that “it is well-known in the art that ‘wet-on-wet’ coating greatly reduces surface cracking and outer layer delamination, due to the fact that the layers are allowed to better bond to each other” (Ans. 4; Schall, col. 1, ll. 9-29, col. 7, ll. 18-22). The Examiner explains that “one of ordinary skill in the art would be motivated to use the ‘wet-on-wet’ coating method of Schall in the stent coating method of Berg in order to improve the production time of the parts and to prevent surface cracking and delamination of the coating” (Ans. 4). As argued by Appellant, however, the Examiner has not substantiated that one of ordinary skill in the art would have expected that wet-on-wet coating in general, and more particularly if used in coating the stent of Berg, would have been accompanied by a Appeal 2010-005961 Application 11/649,497 4 reduction in surface cracking and prevention of outer layer delamination (App. Br. 11-13; Reply Br. 9-10). Furthermore and as argued by Appellant, the Examiner has not reasonably established that Schall’s disclosed drying time reduction using wet-on-wet coating of multiple layers compared to the drying time of a single layer of the same thickness of a coating including a quick setting binder would have led one of ordinary skill in the art to modify Berg’s stent coating method to eliminate the drying steps between coating applications (App. Br. 9-11; Reply Br. 7-9). In sum, Appellant contends that impermissible hindsight appears to be at work in the Examiner’s proposed rejection and asserted reasons to combine the applied references (Reply Br. 10-11). On this record, we agree with Appellant that the Examiner’s proposed modification of Berg based on the disparate teachings of Schall appears to be premised on an impermissible use of hindsight after review of Appellant’s disclosure rather than on an apparent reason to modify Berg based on the teachings of the applied references. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) (The fact finder must be aware “of the distortion caused by hindsight bias and must be cautious of arguments reliant upon ex post reasoning;” citing Graham v. John Deere Co., 383 U.S. 1, 36 (1966) (warning against a “temptation to read into the prior art the teachings of the invention in issue”)). Rejections based on § 103(a) must rest on a factual basis with these facts being interpreted without hindsight reconstruction of the invention from the prior art. See In re Warner, 379 F.2d 1011, 1017 (CCPA 1967). Appeal 2010-005961 Application 11/649,497 5 It follows that the Examiner’s obviousness rejection of the appealed claims is not sustained, on this appeal record. ORDER The Examiner’s decision to reject claims 1, 2, and 5 over Berg in view of Schall is reversed. REVERSED sld