Ex Parte Perez et al

Board of Patent Appeals and Interferences

Jan 20, 2011

10091172 (B.P.A.I. Jan. 20, 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.
10/091,172 03/04/2002 Juan I. Perez 06-00991US01 9937
54953 7590 01/20/2011
BROOKS, CAMERON & HUEBSCH, PLLC
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EXAMINER
SCHILLINGER, ANN M
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
01/20/2011 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 JUAN I. PEREZ, MATTHEW J. FITZ, ROBIN W. ECKERT,
OCTAVIAN IANCEA, RICHARD NEWHAUSER, DAVID T. POLLOCK,
and TIMOTHY A.M. CHUTER
__________

Appeal 2009-015402
Application 10/091,172
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and STEPHEN WALSH,
Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION ON APPEAL1
This appeal under 35 U.S.C. § 134 involves claims to a system for
treating vasculature at a repair site. The Examiner rejected the claims as
obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2009-015402
Application 10/091,172

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STATEMENT OF THE CASE
Claims 1-9, 12-22, 24, and 25 stand rejected and appealed. (App. Br.
3).2 Claim 1 is representative and reads as follows:
Claim 1: A system for treating vasculature at a repair site,
comprising: a first treatment component;
a first sheath having the first treatment component and
configured to receive a subsequent treatment component after
the first sheath is placed within the vasculature and the first
treatment component is deployed, the first sheath having an
inferior end and a length sufficient to extend to a repair site
within the vasculature; and
a loading capsule configured to receive a subsequent
treatment component, wherein the loading capsule includes a
superior terminal end that is configured to mate with the
inferior end of the first sheath.

The sole rejection before us for review is the Examiner’s rejection of
claims 1-9, 12-22, 24, and 25 under 35 U.S.C. § 103(a) as obvious over
McDonald3 and Staehle4 (Ans. 3).
DISCUSSION
The Examiner cites McDonald as describing a device for delivering
multiple self-expanding stents, having all of the features of claim 1, except
for the claimed loading capsule (id.). To meet that deficiency, the Examiner
cites Staehle as disclosing a loading capsule “for releasably retaining a
compressed stent” (id.).
Based on the references’ teachings, the Examiner concludes that an
ordinary artisan would have considered it obvious to combine Staehle’s

2 Appeal Brief filed September 10, 2008.
3 U.S. Patent No. 6,090,136 (filed June 25, 1997).
4 U.S. Patent No. 6,132,458 (filed May 15, 1998).
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Application 10/091,172

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teaching of a loading capsule “to a device for delivering multiple self-
expandable vascular stents as per McDonald et al., the motivation to
combine being the stent within the capsule of Staehle et al. ‘would not be
subjected to compression set due to compression for prolonged period of
time’” (id. (citing Staehle, col. 1, lines 10-15)).
Appellants contend that the Examiner failed to make a prima facie
case of obviousness because the “suggested combination is simply an
impermissible hindsight reconstruction based on the teaching in the
applicants’ disclosure” (App. Br. 9). In particular, Appellants urge, neither
reference suggests that the funnel in Staehle’s device that reduces the stent’s
profile for advancement in the deployment tool “would even be workable
with the rolled stent 13 disclosed in McDonald et al. In fact, one can
imagine the rolled stent 13 of McDonald et al. becoming stuck within the
funnel 19 structure of the Staehle et al. device 10 if an attempt was made to
advance it therethrough” (id.).
The Examiner responds that “there is a reasonable expectation of
success that the structure of McDonald et al. will not become stuck in the
funnel structure of the Staehle et al. device” (Ans. 4). Moreover, the
Examiner argues, “arguments of counsel cannot take the place of evidence in
the record. Examples of attorney statements which are not evidence and
which must be supported by an appropriate affidavit or declaration include
inoperability of the prior art” (id. (citing MPEP § 716.01(c)(II))).
Appellants reply by pointing out that McDonald’s stent is essentially a
sheet that is rolled around a mandril before deployment, and that when the
rolled stent is inserted into the catheter for deployment, the outward
expansion of the sheet presses the stent against the interior walls of the
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Application 10/091,172

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catheter (Reply Br. 3). Thus, Appellants argue, placing McDonald’s stent
“in the receiving opening 17 in the device 10 of Staehle et al. would cause
the stent 13 to unroll. There is no basis for one to believe the funnel 19 of
the device 10 will cause the unrolled stent 13 to reroll” (id.).
We find that Appellants have the better argument.
As stated in In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992):
[T]he examiner bears the initial burden . . . of presenting a
prima facie case of unpatentability. . . . After evidence or
argument is submitted by the applicant in response,
patentability is determined on the totality of the record, by a
preponderance of evidence with due consideration to
persuasiveness of argument.

As the Supreme Court pointed out in KSR Int'l Co. v. Teleflex
Inc., 550 U.S. 398 (2007), when determining whether the prior art gives a
reason for practicing the claimed subject matter, the analysis “need not seek
out precise teachings directed to the specific subject matter of the challenged
claim, for a court can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.” Id. at 418; see also id. at
421 (“A person of ordinary skill is . . . a person of ordinary creativity, not an
automaton.”).
Ultimately, therefore, “[i]n determining whether obviousness is
established by combining the teachings of the prior art, the test is what the
combined teachings of the references would have suggested to those of
ordinary skill in the art.” In re GPAC Inc., 57 F.3d 1573, 1581 (Fed. Cir.
1995) (internal quotations omitted).
In the instant case, as Appellants point out, McDonald teaches that its
stent is essentially a wound or rolled perforated sheet that, when deployed,
Appeal 2009-015402
Application 10/091,172

5
expands radially outwardly to exert sufficient force on the interior walls of
the patient’s blood vessel to fix the stent in place (see McDonald, col. 7, l.
66, through col. 8, l. 1(“The sheet 11 possesses an inherent resilience and
spring force that seeks to unwind the wound layers and expand the stent
lumen . . . .”); see also, id. at col. 7, ll. 42-44 (“The released tubular body 13
self expands in diameter to its expanded roll state constrained in size by the
diameter of the body lumen at the site.”)).
To pre-compress McDonald’s stent before deployment, it must be
rolled around a mandril (see id. at col. 7, ll. 23-26 (“In accordance with a
method of installation using the depicted placement system 100, the
perforated sheet 11 is rolled up into a tubular stent 13 such as by rolling the
sheet 11 around a mandril (not illustrated).”); see also, id. at col. 13, ll. 39-
46 (stent can be made of rolled metal heated to high temperature)).
Staehle discloses a device that stores stents in a decompressed
configuration, and then re-compresses them for deployment by forcing the
stents through a funnel-shaped passage mated to a deployment catheter (see
Staehle, abstract (“funnel . . . is shaped for collapsing the self expanding
stent before loading the stent into the space of the outer tube”); see also, id.
at Figure 1).
Thus, while an ordinary artisan may have considered Staehle’s device
suitable for deploying certain types of collapsible stents, given that
compression of McDonald’s stent requires it to be rolled about a mandril, we
are not persuaded that an ordinary artisan would have considered it
desirable, or even suitable, to attempt to deploy McDonald’s rolled stent
using Staehle’s device, which requires the decompressed stent to be re-
compressed by being forced through a funnel. Accordingly, given the
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Application 10/091,172

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relevant teachings in the references, we agree with Appellants that a
preponderance of the evidence does not support the Examiner’s prima facie
case.
We therefore reverse the Examiner’s obviousness rejection of claims
1-9, 12-22, 24, and 25 over McDonald and Staehle.

REVERSED

alw

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