Ex Parte Papp

Patent Trial and Appeal Board

Dec 6, 2016

12535556 (P.T.A.B. Dec. 6, 2016)

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.
12/535,556 08/04/2009 John E. Papp 104293.00005 1619
12/08/201645159 7590
SQUIRE PB (Abbott)
275 BATTERY STREET, SUITE 2600
SAN FRANCISCO, CA 94111-3356
EXAMINER
BOWMAN, ANDREW J
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
12/08/2016 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):
sfripdocket @ squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN E. P APP1
Appeal 2015-006776
Application 12/535,556
Technology Center 1700
Before BRADLEY R. GARRIS, TERRY J. OWENS, and JEFFREY R.
SNAY, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134, Appellant appeals from the Examiner’s
rejections under 35 U.S.C. § 103(a) of claims 1—7 and 9-13 as unpatentable
over Chappa (US 2007/0101933 Al, published May 10, 2007) in view of
Fifer (US 2006/0149365 Al, published Jul. 6, 2006) and of claims 8, 14—16,
18—21, 29, and 30 over these references in combination with Pacetti (US
1 Abbott Cardiovascular Systems, Inc. is identified as the real party in
interest. App. Br. 1.
Appeal 2015-006776
Application 12/535,556
6,695,920 Bl, issued Feb. 24, 2004). We have jurisdiction under 35 U.S.C.
§6.
We AFFIRM.
Appellant claims a method of coating a stent that comprises spraying
the stent with a first coating while rotating the stent in a first direction and
spraying with a second coating while rotating in a second opposite direction,
wherein a greater amount of the first coating is on a first side surface of a
stent strut and a greater amount of the second coating is on a second side
surface of the strut (independent claims 1, 9, and 15) thereby balancing the
distribution of the coatings over the first and second side surfaces
(independent claim 15) such that the mean thickness profile of the combined
coatings is the same or substantially the same over the first and second side
surfaces (dependent claim 16, 29, and 30).
A copy of representative claims 1,15, and 16, taken from the Claims
Appendix of the Appeal Brief, appears below.
1. A method of coating a stent, the method comprising:
discharging from a dispenser a first coating substance
onto the stent while simultaneously rotating the stent around a
longitudinal axis of the stent in a first rotation direction and
while simultaneously moving the dispenser across the
longitudinal length of the stent; followed by
discharging from the dispenser a second coating
substance onto the first coating substance on the stent while
simultaneously rotating the stent around the longitudinal axis of
the stent in a second rotation direction and while
simultaneously moving the dispenser across the longitudinal
length of the stent, the second rotation direction being the
reverse of the first rotation direction,
wherein the discharging from the dispenser of the first
coating substance forms a coating layer having a greater
amount of the first coating substance on a first side surface of a
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Application 12/535,556
stent stmt as compared to a second side surface of the stent
stmt, the first side surface facing in the first rotation direction,
the second side surface facing in the second rotation direction;
and
the discharging from the dispenser of the second coating
substance forms a coating layer having a greater amount of the
second coating substance on the second side surface as
compared to the first side surface.
15. A method of coating a stent, the method comprising:
performing at least two process cycles, each process
cycle including distributing a sprayed coating substance onto or
into a stent while simultaneously rotating the stent, the stent
including a plurality of stmts, each stmt having a first side
surface facing a first rotation direction and a second side
surface facing in a second rotation direction opposite the first
rotation direction,
wherein performing the at least two process cycles
includes balancing the distribution of the coating substance
over the first and second side surfaces of the stmts, by rotating
the stent during at least one of the process cycles in the first
rotation direction that is opposite of the second rotation
direction of at least one other of the process cycles,
wherein the balancing of the distribution over the first
and second side surfaces of the stmts includes:
forming a first coating layer around the stmts during the
at least one of the process cycles, the first coating layer having
an average thickness over the first side surfaces that is
substantially greater than that on the second side surfaces; and
forming a second coating layer around the first coating
during the at least one other of the process cycles, the second
coating layer having an average thickness over the second side
surfaces that is substantially greater than that on the first side
surfaces.
16. The method of claim 15, wherein the first coating
layer and the second coating layer in combination form a
coating around each of the stmts, and the coating has a mean
thickness profile over the first side surfaces that is the same or
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Application 12/535,556
substantially the same as a mean thickness profile over the
second side surfaces.
Appellant presents arguments directed to claims 1,9, 15, 16, 29, and
30 but does not present separate arguments specifically directed to the other
(dependent) claims on appeal (App. Br. 7—17). Therefore, these other claims
will stand or fall with the claims from which they depend.
We sustain the Examiner’s rejections for the reasons expressed in the
Final Action (dated 30 April 2014), the Answer, and below.
In rejecting independent claims 1 and 9 over Chappa and Fifer, the
Examiner finds that Chappa’s coating method does not include the claimed
feature wherein coatings are sprayed while rotating the stent in opposite
directions but that Fifer discloses spraying a stent while rotating it in
opposite directions (Final Action 3 (citing Fifer || 35—38)). The Examiner
concludes that it would have been obvious “to rotate the stents of Chappa in
the manner described by Fifer in order to gain the coating profile of Fifer on
the stents of Chappa” (id.). Further, the Examiner determines that “as the
stent rotates in one direction, coating material would tend to increase on
[the] tangential moving face of the stent struts with relation to the opposite
facing side of the same strut, effectively meeting the limitations of the
current claims” (id.). The Examiner relies on a corresponding rationale in
rejecting claims 15, 16, 29, and 30 over Chappa, Fifer, and Pacetti (id. at 5).
Appellant contests the Examiner’s proposed combination of Chappa
and Fifer by arguing “there is no teaching in Fifer that rotation in both
forward and reverse directions is needed or desired to achieve the coating
profiles illustrated in Fifer[, and] [t]hus it would not have been obvious to
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Application 12/535,556
modify Chappa to rotate the stent simultaneously with spraying, and to
perform rotation in both forward and reverse directions” (App. Br. 9).
Appellant’s argument is not persuasive. There is no dispute that Fifer
expressly teaches “[t]he stent 210 can be rotated ... in alternating directions
to achieve coating characteristics as desired” (Fifer 138). In light of this
teaching, it would have been obvious for an artisan to spray Chappa’s stent
while rotating it in alternating directions in order to predictably use the
known coating technique of Fifer according to its established function of
achieving desired coating characteristics. See KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 417 (2007) (In assessing the obviousness of claims to a
combination of prior art elements, the question to be asked is “whether the
improvement is more than the predictable use of prior art elements according
to their established functions.”).
Appellant correctly indicates that the Examiner is presenting an
inherency theory in the above determination that the claimed greater amount
of coating on a side surface necessarily will occur on the side of Chappa’s
strut facing the spray during stent rotation (App. Br. 9-10). Appellant
argues (1) that such greater amount would not occur (id. at 10), (2) that other
factors could predominate whereby a greater amount would not necessarily
be deposited (id. at 11), and (3) that the presence of any such greater amount
would not be recognized by a person of ordinary skill (id. at 11—12).
Regarding argument (3), contrary to Appellant’s belief, a
determination of inherency does not require that a person of ordinary skill in
the art would have recognized the inherent disclosure. See Schering Corp. v.
Geneva Pharm., Inc., 339 F.3d 1373, 1377 (Fed. Cir. 2003).
However, “in order to rely on inherency to establish the existence of
the claim limitation in the prior art in an obviousness analysis[,] the
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limitation at issue necessarily must be present, or the natural result of the
combination of elements explicitly disclosed by the prior art.” Par Pharm.,
Inc. v. TWi Pharm., Inc., 773 F.3d 1186, 1195-96 (Fed. Cir. 2014). In this
regard, Appellant’s argument (1) that their greater amount limitation would
not occur in the Chappa/Fifer combination is contradicted by their own
Specification disclosure explaining why leading and trailing stent surfaces
tend to receive greater and lesser amounts of coating (Spec. 178). See In re
Kao, 639 F.3d 1057, 1070 (Fed. Cir. 2011) (agreeing with the Board’s
finding that the specification confirmed the claimed property was inherent in
the prior art).
We also are not convinced by Appellant’s above argument (2) that
other factors could predominate whereby a greater amount would not
necessarily be deposited. “[T]he prior art need only meet the inherently
disclosed limitation to the extent the patented method does.” King Pharm.,
Inc. v. Eon Labs, Inc., 616 F.3d 1267, 1276 (Fed. Cir. 2010). Here, the
record reflects that the Chappa/Fifer combination inherently and necessarily
would result in the greater amount limitation to the extent Appellant’s
claimed method results in a greater amount. As noted by the Examiner,
“[A]ppellant does not disclose any reason[] why it [i.e., the claimed greater
amount] occurs in their procedure but. . . would not occur in [the
corresponding method] of the prior art [i.e., the combination of Chappa and
Fifer]” (Ans. 2).
Regarding claims 15, 16, 29, and 30, Appellant additionally contends:
Without any recognition that the direction of rotation
simultaneous with spraying could have an effect on the
distribution of a coating substance on side surfaces of stent
struts, it would not have been obvious for a person of ordinary
skill in the art to balance the distribution of the coating
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substance over the side surfaces of the stent struts by rotating
the stent in opposite directions.
(App. Br. 16; see also id. at 16—17).
The deficiency of Appellant’s contention is that it does not explain
why the claimed balancing would not occur inherently and necessarily in the
Chappa/Fifer combination proposed by the Examiner. In this regard, we
emphasize that independent claim 15 recites “balancing the distribution of
the coating substance over the first and second side surfaces of the struts, by
rotating the stent during at least one of the process cycles in the first rotation
direction that is opposite that of the second rotation direction of at least one
other of the process cycles.” Thus, by its express language, claim 15 states
that the required balancing is achieved by the step of rotating the stent in
first and second opposite directions. This same rotating step would occur in
the Chappa/Fifer combination as previously discussed and, therefore,
inherently would produce the claimed balancing. For analogous reasons, the
ultimate coating of the Chappa/Fifer combination necessarily would have the
mean thickness profile required by dependent claims 16, 29, and 30.
In summary, Appellant fails to show error in the obviousness
conclusions and inherency determinations expressed by the Examiner in the
rejections advanced in this appeal.
DECISION
The decision of the Examiner 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)(1).
AFFIRMED
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