Ex Parte Pacetti et al

Patent Trial and Appeal Board

Aug 10, 2018

14053000 (P.T.A.B. Aug. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/053,000 10/14/2013
45159 7590 08/14/2018
SQUIRE PB (Abbott)
275 BATTERY STREET, SUITE 2600
SAN FRANCISCO, CA 94111-3356
FIRST NAMED INVENTOR
Stephen D. Pacetti
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.
050623.01684 2256
EXAMINER
EDWARDS, LAURA ESTELLE
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
08/14/2018 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):
sfripdocket@squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEPHEN D. PACETTI and LAURA MELTON KAL VASS 1
Appeal 2016-008624
Application 14/053,000
Technology Center 1700
Before ROMULO H. DELMENDO, MARK NAGUMO, and
CHRISTOPHER C. KENNEDY, Administrative Patent Judges.
KENNEDY, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner's
decision rejecting claims 7-9, 12, 14, and 15.2 We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM-IN-PART.
BACKGROUND
The subject matter on appeal relates to a system for supporting a stent
during a coating process. E.g., Spec. ,r 2; Claims 7, 12. Claims 7 and 12 are
1 The applicant is Abbott Cardiovascular Systems Inc., which is also
identified as the real party in interest. App. Br. 1.
2 After the Notice of Appeal was filed, claims 1-6, 10, 11, and 13 were
cancelled, and dependent claim 12 was rewritten into independent form. See
Amendment after Appeal dated May 1 7, 2016 ( entered June 8, 2016).
Appeal2016-008624
Application 14/053,000
reproduced below from pages 19--20 (Claims Appendix) of the Appeal
Brief3 ( emphasis added to certain claim limitations):
7. A system for coating a stent having an outer surface facing
radially outward and an inner surface facing radially inward, the
inner surface forming a passageway that extends through the
center of the stent from a distal end of the stent to a proximal end
of the stent, the passageway having a circular opening at each of
the distal and proximal ends, the stent having a central axis
extending through the center of the circular openings, the system
compnsmg:
an apparatus that supports the stent, wherein no part of the
apparatus intersects a midplane of the stent, the midplane located
halfway between the distal and proximal ends, the outer surface
of the stent defining the outer boundary of the midplane, the
midplane perpendicular to the central axis of the stent; and
a coating device adjacent to the apparatus, the coating device
configured to discharge a coating substance onto the stent,
wherein a stream of gas rotates the stent about the central axis
of the stent, and the stream of gas is discharged from a blower
adjacent the stent or from the coating device.
12. A system for coating a stent having an outer surface facing
radially outward and an inner surface facing radially inward, the
inner surface forming a passageway that extends through the
center of the stent from a distal end of the stent to a proximal end
of the stent, the passageway having a circular opening at each of
the distal and proximal ends, the stent having a central axis
extending through the center of the circular openings, the system
compnsmg:
an apparatus that supports the stent, wherein no part of the
apparatus intersects a midplane of the stent, the midplane located
halfway between the distal and proximal ends, the outer surface
3 The Claims Appendix does not have page numbers. Our numbering
continues sequentially from the Appeal Brief, with the first page of the
Claims Appendix being page 19.
2
Appeal2016-008624
Application 14/053,000
of the stent defining the outer boundary of the midplane, the
midplane perpendicular to the central axis of the stent; and
a coating device adjacent to the apparatus, the coating device
configured to discharge a coating substance onto the stent,
wherein the apparatus rotates the stent at least 360 degrees about
the central axis of the stent, the apparatus extends into the
passageway of the stent, and the apparatus has no point that
remains in continuous contact with the stent while the stent
rotates 360 degrees about the central axis of the stent,
wherein the apparatus has a point of contact that makes
momentary contact with the stent while the stent rotates 3 60
degrees about the central axis of the stent.
REJECTIONS ON APPEAL
1. Claim 12 stands rejected under 35 U.S.C. § 112, ,r 1, for failure to
comply with the written description requirement.
2. Claim 12 stands rejected under 35 U.S.C. § 112, ,r 2, as indefinite.
3. Claims 7-9, 14, and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Schwarz (US 7,407,551 B2, issued Aug. 5, 2008) in view
of Pacetti (US 7,504,125 Bl, issued Mar. 17, 2009).
4. Claims 7-9, 14, and 15 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Palasis (US 2005/0079274 Al, published Apr. 14, 2005)
in view of Pacetti.
5. Claim 12 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Schwarz.
6. Claim 12 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Palasis.
3
Appeal2016-008624
Application 14/053,000
ANALYSIS
After review of the cited evidence in the appeal record and the
opposing positions of the Appellant and the Examiner, we determine that the
Appellant has not identified reversible error in Rejection 3. Accordingly, we
affirm that rejection for reasons set forth below and in the Examiner's
Answer. See generally Ans. 3--4, 12-14. However, as set forth below, we
reverse as to Rejections 1, 2, and 4---6.
Claims 7-9, 14, and 15 (Re} ections 3 & 4)
1. Rejection Based on Schwarz (Rejection 3)
The Examiner finds that Schwarz teaches a system for coating a
medical device, including a stent, meeting each limitation of claim 7, except
that Schwarz does not expressly teach "a blower adjacent the stent for
discharging a gas stream thereon or the coating device discharging the gas
stream in rotating the stent about the central axis of the stent." Ans. 3--4.
However, in view of Pacetti, the Examiner finds:
[I]t was known in the art ... to appropriately place a stream of
gas discharged from a blower adjacent the stent or even from the
coating device in its rotation with coating application thereto to
a stent to enable movement of the stent about a central axis with
at least one benefit of the gas stream being to inhibit solvent
evaporation of the coating.
Id. at 4. The Examiner concludes that "[i]t would have been obvious ... to
provide a blower adjacent the stent or even from the coating device as taught
by Pacetti into the Schwarz system for several benefits one of which is
inhibiting solvent evaporation of the coating." Id.
The Appellant argues that "Pacetti is silent as to using a stream of gas
to rotate a stent about its central axis." App. Br. 13. The Appellant
4
Appeal2016-008624
Application 14/053,000
acknowledges that "Pacetti describes the use of gas to induce or inhibit
evaporation of a solvent," but asserts that "Pacetti does not disclose whether
such a[] gas, which is applied to induce or inhibit solvent evaporation, would
cause rotation of a stent about its central axis." Id. The Appellant also
argues that Schwarz coats the stent while the stent is suspended or vibrating
freely on a tray, while, in Pacetti' s system, "the stent is secured on [a]
rotating support element ... which rotates the stent about its central axis
while a gas from [a] blower ... is applied to induce or inhibit solvent
evaporation." Id. According to the Appellant, "[even] if it were
assumed ... that the stent in Pacetti is somehow rotated about its central axis
by the gas instead of the support element ... , [t]here would be no stent
support in Schwarz to ensure rotation of the stent about its central axis." Id.
The Appellant asserts that "[ a ]dding any such stent support to Schwarz is
contrary to its principle of operation. For this reason, it would not have been
obvious to add the blower ... of Pacetti to the Schwarz apparatus in an
attempt to rotate the stent about [its] central axis." Id.
Those arguments are not persuasive of reversible error in the
rejection. The Examiner relies on Schwarz, not Pacetti, for "provid[ing] the
basis of a rotationally suspended/levitated stent combined with use of a gas
stream continuing to move the stent in air via one or more gas structures."
Ans. 13. In Schwarz, "air suspension or mechanical vibration" is used to
position medical devices such as stents for coating. Schwarz at 2:55-56. As
the stents are in the air, they are coated by spray from adjacent nozzles. See,
e.g., Figs. 8 & 9. Although Figures 8 and 9 depict mechanical and acoustical
means, respectively, for vibrating the stents, and they do not specifically
depict gas flow, Schwarz teaches that "[i]n addition to the mechanical and
5
Appeal2016-008624
Application 14/053,000
acoustical means ... , other embodiments ... can include one or more gas
flow structures," which "help[] to suspend the medical devices, move the
medical devices into and out of the coating chamber, or both." Id. at 16:57-
61. Schwarz also teaches embodiments in which multiple coating layers are
applied and that "it may be preferable to dry the coatings between each
coat." Id. at 16:36-39. Schwarz teaches that "drying refers to driving off of
a solvent from the coating material." Id. at 16:41--42.
As set forth above, Schwarz itself discloses the use of gas in
connection with its coating system. Pacetti provides additional reasons to
provide gas through a blower adjacent the stent, consistent with the
teachings of Schwarz, i.e., facilitating solvent evaporation. E.g., Pacetti at
4:23-26 ("The present invention can also include a blower 46 for directing a
gas (e.g., air) onto stent 10 to induce or inhibit evaporation of the solvent
from the composition applied on the stent 10."). Although Schwarz does not
expressly disclose the use of gas to rotate a stent about a central axis, the
Examiner finds that "the teachings of Schwartz [sic] would effect
manipulation of the stent with rotation ... with Pacetti further supporting
the use of a gas structure in the form of a blower or from the coating
device." Ans. 13 (emphasis added).
In the Reply Brief, the Appellant does not address that determination
or otherwise attempt to show error in it. See generally Reply Br. On this
record, the Appellant's arguments that Pacetti does not expressly disclose
rotation due to the gas stream, and that Schwarz does not have a "stent
support" as in Pacetti "to ensure rotation of the stent," App. Br. 13, do not
persuasively rebut the Examiner's finding that the gas supplied to the system
of Schwarz naturally would cause at least some rotation of at least one stent
6
Appeal2016-008624
Application 14/053,000
about its central axis sufficient to fall within the scope of claim 7. In
particular, the Appellant's argument that "[t]here would be no stent support
in Schwarz to ensure rotation of the stent about its central axis," id.,
assumes, without elaboration, that rotation of the stent about its central axis
requires that the stent be supported. However, just as a straw in a stream of
moving air would be expected to twirl and thus, to some extent, rotate about
its central axis, so would a stent. The Appellant has not directed our
attention to any disclosure in the Specification or in the prior art of record
that indicates that a support of some sort is necessary. Moreover, there are
no structural or functional limitations recited in claim 7 that require the
presence of a particular support to ensure rotation about the central axis of
the stent. The Appellant does not argue that the apparatus of Schwarz
Figures 8 and 9 falls beyond the scope of the term "an apparatus that
supports the stent."
The Appellant raises no other substantive arguments for the
patentability of claim 7.
Accordingly, we are not persuaded of reversible error in the
Examiner's rejection of claim 7. See In re Jung, 637 F.3d 1356, 1365 (Fed.
Cir. 2011) ("[I]t has long been the Board's practice to require an applicant to
identify the alleged error in the examiner's rejections .... ").
With respect to dependent claims 8 and 9, the Appellant's arguments
consist of a recitation of the claim language and a naked assertion that the
prior art does not teach the claimed subject matter. See App. Br. 13-14.
The Examiner provides further discussion of those claims in the Answer,
e.g., Ans. 14--15, which the Appellant does not address or dispute in the
Reply Brief, see generally Reply Br. The Appellant's arguments are
7
Appeal2016-008624
Application 14/053,000
unpersuasive of reversible error in the Examiner's rejection. See In re
Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (holding that "the Board
reasonably interpreted Rule 41.3 7 to require more substantive arguments in
an appeal brief than a mere recitation of the claim elements and a naked
assertion that the corresponding elements were not found in the prior art");
see Jung, 637 F.3d at 1365.
With respect to claim 14, the Appellant argues that it "includes all the
features of claim 7," and that the rejection should be reversed "for at least
the same [reasons] given above for claim 7." App. Br. 14. Because we
affirm the rejection of claim 7, discussed above, we likewise affirm the
rejection of claim 14.
With respect to claim 15, the Appellant recites the claim language and
states that "there is no description that [Pacetti's] blower is a type of a
coating device that discharges a coating substance." App. Br. 14. That
argument, however, does not address the Examiner's specific findings
regarding Pacetti's blower, or otherwise show error in them. See, e.g.,
Ans. 16 ("Pacetti teaches that the coating device (36) can be air assisted such
that th[e] gas stream would dispense the coating material .... "). On this
record, the Appellant's limited discussion of claim 15 fails to show
reversible error in the Examiner's rejection. See Lovin, 652 F.3d at 1357;
Jung, 637 F.3d at 1365.
We therefore affirm Rejection 3.
2. Rejection based on Palasis (Rejection 4)
The Examiner finds that Palasis teaches a system for coating a
medical device, including a stent, that meets the limitations of claim 7
except that "Palasis is silent concerning a stream of gas being discharged
8
Appeal2016-008624
Application 14/053,000
from a blower adjacent the stent or from the coating device so as to rotate
the stent about the central axis of the stent." Ans. 5. The Examiner relies on
the same portions of Pacetti discussed above and concludes that "[i]t would
have been obvious ... to provide a blower adjacent the stent or even from
the coating device as taught by Pacetti into the Palasis system for several
benefits one of which is inhibiting solvent evaporation of the coating." Id.
The Appellant argues that "Pacetti is silent as to using a stream of gas
to rotate a stent about its central axis," and that "Pacetti does not disclose
whether such a[] gas, which is applied to induce or inhibit solvent
evaporation, would cause rotation of a stent around its central axis." App.
Br. 16. The Appellant explains that, in Palasis, stent rotation "is controlled
via mechanical engagement between element 18 in Palasis and the stent."
Id.; see also Palasis Fig. 6c ( depicting element 18). The Appellant further
explains that, in Palasis, stents 8 are carried on rotating pins 7, which are
coupled to a belt 1 such that the pins ( and, along with them, the stents) rotate
as the belt advances. App. Br. 16; see also Palasis ,r,r 21-24, Figs. 1--4. The
Appellant argues that "[t]here is no evidence that ... the gas, as used in
Pacetti to induce or inhibit solvent evaporation, would overcome the
mechanical engagement in Palasis to cause rotation of the stent." App.
Br. 17.
The record supports the Appellant's arguments. The Examiner does
not address the fact that stent rotation in Palasis is achieved by mechanical
engagement of rotating pins 7 and belt 1. E.g., Palasis Fig. 1. Even
assuming a person of ordinary skill in the art would have been motivated to
include Pacetti's blower in the system of Palasis for purposes of solvent
evaporation, claim 7 requires the blower to provide "a stream of gas [that]
9
Appeal2016-008624
Application 14/053,000
rotates the stent about the central axis of the stent." Given that Pacetti is
silent as to using the blower for purposes of rotation, there is not sufficient
evidence in the record that a person of ordinary skill in the art would have
been motivated to place Pacetti's blower into the system of Palasis so that
the blower would be positioned to rotate the stents of Palasis. Moreover,
even if the blower were positioned such that it theoretically could rotate the
stents about their central axis, the Examiner has identified no basis to believe
that the gas from the blower-the primary purpose of which is to effect
solvent evaporation-would exit the blower with sufficient force to
overcome the mechanical engagement of the stents to the rotating pins such
that the stream of gas would itself cause the stents to rotate.
On this record, we are not persuaded that a person of ordinary skill in
the art would have been motivated to combine Palasis and Pacetti in a way
that reasonably would have been expected to achieve the subject matter of
claim 7. We reverse the Examiner's rejection of claim 7.
Because claims 8, 9, 14, and 15 depend from claim 7, and the
Examiner's rejection of those claims does not remedy the error identified
above, we likewise reverse the Examiner's rejection of those claims.
Claim 12 (Rejections 1, 2, 5, & 6)
1. Rejection based on 35 USC§ 112, f 1 (Rejection 1)
The Examiner determines that "the specification [0044] fails to
explicitly teach or suggest ... the further wherein clause in combination that
"the [support] apparatus has a point of contact that makes momentary
contact with the stent while the stent rotates 360 degrees about the central
axis of the stent." Ans. 2. The Examiner appears to understand the
recitation of claim 12 that "the apparatus has no point that remains in
10
Appeal2016-008624
Application 14/053,000
continuous contact with the stent while the stent rotates 360 degrees about
the central axis of the stent" to require that, at some point during rotation of
the stent, the stent is suspended in the apparatus and makes no contact with
the apparatus. See id. at 10 ("no part of the stent touches the [support]
apparatus" (brackets in original)), 12 (referencing "full suspen[sion] with no
contact (suspended) at some point of the rotation"). Because claim 12
subsequently recites that "the apparatus has a point of contact that makes
momentary contact with the stent while the stent rotates 3 60 degrees about
the central axis of the stent," the Examiner states: "This sequence of events,
in which no part of the stent touches the [support] apparatus to another
embodiment wherein different parts (points) of the stent touches the
[support] apparatus, would not appear to be clearly supported or even be
understood by one of ordinary skill in the art .... " Id. (brackets in original).
"[T]he test for [ compliance with the written description requirement]
is whether the disclosure of the application relied upon reasonably conveys
to those skilled in the art that the inventor had possession of the claimed
subject matter as of the filing date." Ariad Pharms., Inc. v. Eli Lilly & Co.,
598 F.3d 1336, 1351 (Fed. Cir. 2010). "The invention claimed does not
have to be described in ipsis verbis in order to satisfy the description
requirement of§ 112." In re Lukach, 442 F.2d 967, 969 (CCPA 1971); see
also Union Oil Co. of Cal. v. Atlantic Richfield Co., 208 F.3d 989, 1000
(Fed. Cir. 2000).
The Examiner's rationale is not persuasive. Contrary to the
Examiner's apparent interpretation of claim 12, the language "the apparatus
has no point that remains in continuous contact with the stent while the stent
rotates 360 degrees about the central axis of the stent" (emphasis added)
11
Appeal2016-008624
Application 14/053,000
does not mean that "no part of the stent touches the [support] apparatus."
See Ans. 10. Rather, the claim states that no "point" of the apparatus
"remains in continuous contact" with the stent. Thus, the claim permits the
apparatus to be in continuous contact with the stent, so long as "no point,"
i.e., no single point, of the apparatus remains in continuous contact with the
stent. As the Specification explains:
Movement of the stent 7 0 within the cage 72, whether due to cage
rotation, the spray plume or other cause, assures that there are no
permanent contact points between the cage and the stent. That
is, a particular point of contact between the stent 70 and the cage
72 exists only momentarily before the stent shifts in relation to
the cage and forms a different point of contact.
Spec. ,r 40.
With respect to Figure 6, which appears to depict an embodiment of
claim 12, the Specification includes a similar disclosure:
As the stent 90 with the support apparatus 88, the stent will shift
around slightly and, thus, avoid any permanent contact points
between the stent and the support wires 92, 94, 96, 98. That is,
contact points between the stent [9]0 and the support apparatus
88 exist temporarily during the coating process.
Id. ,I 54.
Under the proper understanding of claim 12, those disclosures
adequately show possession by the inventors of the disputed subject matter.
Accordingly, we reverse the § 112, ,r 1 rejection.
2. Rejection based on 35 USC§ 112, f 2 (Rejection 2)
The Examiner's § 112, ,r 2 rejection is based on the same
interpretation of claim 12 discussed above. Namely, assuming that claim 12
requires "full suspen[ sion] with no contact ( suspended) [between the stent
and the apparatus] at some point of the rotation," Ans. 12, the Examiner
12
Appeal2016-008624
Application 14/053,000
determines that the "wherein clauses appear to be conflicting in nature in
that it is unclear whether the apparatus can support and rotate the stent with
or without some type of contact," id. at 3.
The legal standard for definiteness in prosecution is whether a claim
reasonably apprises those of skill in the art of its scope. In re Warmerdam,
33 F.3d 1354, 1361 (Fed. Cir. 1994). "[D]efiniteness of the language
employed must be analyzed-not in a vacuum, but always in light of the
teachings of the prior art and of the particular application disclosure as it
would be interpreted by one possessing the ordinary level of skill in the
pertinent art." In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
Essentially for reasons stated above, we reverse the rejection. We do
not interpret claim 12 as requiring periods during rotation where the
apparatus does not contact the stent. Rather, consistent with the language of
the claim and the disclosures of the Specification discussed above, we
interpret claim 12 as requiring that no single point of the apparatus "remains
in continuous contact with the stent," and that the apparatus has one or more
points of contact that make momentary contact with the stent, the
momentary contact points changing as the stent shifts around. See, e.g.,
Spec. ,r 54. In view of that understanding of claim 12, we are not persuaded
that the wherein clauses "conflict[]" with each other so as to render the claim
indefinite. Accordingly, we reverse the § 112, ,r 2 rejection.
3. Rejection based on Schwarz (Rejection 5)
Claim 12 is similar to claim 7, but claim 12 does not require a blower
or a stream of gas for rotation. Instead, claim 12 requires that the "the
apparatus rotates the stent" and that "the apparatus extends into the passage
of the stent." As discussed above in the context of the§ 112 rejections,
13
Appeal2016-008624
Application 14/053,000
claim 12 further requires that "the apparatus has no point that remains in
continuous contact with the stent while the stent rotates 360 degrees about
the central axis of the stent, wherein the apparatus has a point of contact that
makes momentary contact with the stent while the stent rotates 360 degrees
about the central axis of the stent."
Relying in part on Figures 4 and 5, the Examiner finds that Schwarz
teaches or suggests each limitation of claim 12. Ans. 6-7. However, the
Examiner fails to address the requirement of claim 12 that "the apparatus
extends into the passage of the stent." Figures 4 and 5 of Schwarz depict
medical device 410 secured attached to cage 420 by securements 430, which
"can be wires that are tied to medical device 410 and to cage 420." Schwarz
at 12:35---64. Those figures do not show any portion of wires 430 extending
in to any passage of medical device 410, and the Examiner makes no
findings regarding whether or why a person of ordinary skill might have
been motivated to arrange wires 430 in that manner. Even assuming a
person of ordinary skill in the art would have been motivated to arrange
wires 430 in that manner, the Examiner makes no persuasive findings about
whether that specific arrangement would meet the other relevant limitations
of claim 12, e.g., "the apparatus has no point that remains in continuous
contact with the stent while the stent rotates 360 degrees" and "the apparatus
has a point of contact that makes momentary contact with the stent while the
stent rotates 360 degrees."
On this record, we cannot sustain the Examiner's rejection of claim 12
as unpatentable over Schwarz.
14
Appeal2016-008624
Application 14/053,000
4. Rejection based on Palasis (Rejection 6)
Principally relying on Palasis Fig. 6c, the Examiner finds that Palasis
teaches or suggests the limitations of claim 12, including an apparatus that
extends into the passageway of the stent. Ans. 8. The Examiner finds that
Palasis is silent regarding the limitation that "the apparatus has no point that
remains in continuous contact with the stent while the stent rotates 3 60
degrees about the central axis to the stent," but that "it would have been
obvious ... to provide any suitably arranged wire type support structure ...
to enable rotation of the stent about its central axis with centrifugal force
enable momentary lift of the stent (having no point of contact) because this
would enable coating of all surfaces of the stent." Id.
That argument is not persuasive. The Examiner cites no portion of
Palasis in support of the finding that centrifugal force would cause the stent
to detach from the apparatus. Figure 6c of Palasis, relied upon by the
Examiner, is reproduced below with annotated red circles added.
15
("'·
. ______ , .. ---·-· ·1 7
[·····- 't--T· ··1 "'""'""·'··, ··-1 I J, ·-=] ........ I . i ~ ................ : l .Ii 7 __ .... , .... !
·----- e" ---· .... _L ..
15
Appeal2016-008624
Application 141053,000
Figure 6c depicts "stent 8 ... held under a light compressive force between
the ends 18." Palasis ,r 29. If anything, it appears that the light compressive
force between stent 8 and ends 18 would maintain continuous contact
between stent 8 and the portions of ends 18 shown circled in red as the stent
rotates. On this record, a preponderance of the evidence does not support
the Examiner's finding that the embodiment of Palasis depicted in Figure 6c
shows "an apparatus [that] has no point that remains in continuous contact
with the stent while the stent rotates 360 degrees around the central axis of
the stent."
Accordingly, we cannot sustain the Examiner's rejection of claim 12
as unpatentable over Palasis.
CONCLUSION
We AFFIRM the Examiner's rejections of claims 7-9, 14, and 15 as
unpatentable over Schwarz and Pacetti (Rejection 3). We REVERSE the
remainder of the Examiner's rejections (Rejections 1, 2, and 4---6).
12 § 112, i1 1 NIA 12
12 § 112, i12 NIA 12
7-9, 14,and
§ 103(a)
Schwarz and 7-9, 14,and
15 Pacetti 15
7-9, 14,and
§ 103(a)
Palasis and 7-9, 14,and
15 Pacetti 15
12 § 103(a) Schwarz 12
12 § 103(a) Palasis 12
Summary 7-9,14,and 12 15
16
Appeal2016-008624
Application 14/053,000
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART
17