Ex Parte Renner et al

Patent Trial and Appeal Board

Jun 26, 2018

13983028 (P.T.A.B. Jun. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/983,028 09/30/2013 Peter Renner
23448 7590 06/28/2018
Hultquist IP
P.O. Box 14329
RESEARCH TRIANGLE PARK, NC 27709
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.
4121-191 6905
EXAMINER
JAMIALAHMADI, MAJID
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
06/28/2018 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):
hip@hultquistip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER RENNER, KLAUS DURING,
JOACHIM GEORG PFEFFER, and NASIB DLAIKAN-CAMPOS
Appeal2017-005289
Application 13/983,028
Technology Center 3700
Before ERIC B. GRIMES, RICHARD M. LEBOVITZ, and
JEFFREY N. FREDMAN, Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1 under 35 U.S.C. § 134 involving claims to a stent.
The Examiner rejected the claims as anticipated and as obvious. We have
jurisdiction under 35 U.S.C. § 6(b). We affirm.
Statement of the Case
Background
"The present invention relates to a stent for splinting a nasal passage"
(Spec. 1 :8). The invention "does not need to be individually adjusted for
1 Appellants identify the Real Party in Interest as Dr. Klaus Diiering (App.
Br. 3).
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Application 13/983,028
each nasal passage," is "comfortable," is "easily introduced," and can
"reliably keep open a nasal passage" (Spec. 2:38--40).
The Claims
Claims 1, 3-8, 10, and 14--202 are on appeal. Claims 1 and 16 are
representative and read as follows:
1. A stent for splinting of a nasal passage, comprising a
braided tubular support body wherein the support body has an
essentially cylindrical shape which, in an unloaded state, has a
diameter of at least 4 mm and a length in a range of 25 to 120
mm, wherein the support body has a widened section at its
proximal end, which widened section is closed at the proximal
end of the widened section, and wherein the widened section of
the support body is ball shaped.
16. A stent for splinting of a nasal passage, comprising a
braided tubular support body braided with a single wire or
with a multitude of wires, wherein the wire or wires are
connected at the proximal end of the support body, wherein
the support body has an essentially cylindrical shape and a
widened section at its proximal end, and wherein the
widened section of the support body is ball shaped.
The Issues
A. The Examiner rejected claims 16, 18, and 19 under 35 U.S.C.
§ 102(b) as anticipated by Levy3 (Ans. 3).
B. The Examiner rejected claims 1, 3, 5-8, 10, 17, and 20 under
35 U.S.C. § 103(a) as unpatentable over Levy in view of Molaei4 (Ans. 3).
2 We note that the Examiner objected to claims 11-13 as being dependent
from a rejected claim, but indicated that the claims would be allowable if
rewritten in independent form.
3 Levy, US 2007/0198075 Al, published Aug. 23, 2007.
4 Molaei et al., US 2005/0197690 Al, published Sept. 08, 2005.
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C. The Examiner rejected claims 4, 14, and 15 under 35 U.S.C. § 103(a)
as obvious over Levy in view ofMolaei and in further view ofRosqueta5
(Ans. 3).
A. 35 US.C. § 102(b)
The Examiner finds that Levy at Fig. 4A discloses:
A braided tubular support body (20) braided with a single wire
or with a multitude of wires, wherein the wire or wires are
connected at the proximal end of the support body, wherein the
support body has an essentially cylindrical shape and a widened
section at its proximal end (50), and wherein the widened
section of the support body is ball shaped.
(Final Act. 2). The Examiner finds that the device of Levy is "fully
capable" of "being used for splinting a nasal passage" (Final Act. 2).
The Examiner finds that although "Levy shows a widened section at
the distalmost end ... 50," the "terms 'proximal end' and 'distal end' are
relative terms and there are no structural or functional limitations to the
claims indicating that the intended distal end of Levy's device can't also be
called the proximal end" (Ans. 4).
The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner's conclusion that the stent of
Levy is structurally identical to, and anticipates, the stent required by the
claims?
5 Rosqueta et al., US 2009/0287294 Al, published Nov. 19, 2009.
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Findings of Fact
1. Figure 4A of Levy is reproduced below:
62 FIG. 4B
20
FIG. 4A
Figure 4A illustrates a "vascular aneurysm-treating strent arrangment"
composed of braided (woven) wires that are connected at a widened closed
ball shaped end section (50). The stent has a "cylindrical" and "tubular"
support body (20) (Levy abstract, i-fi-17, 9, 35, Figs. 1, 4A).
2. Levy teaches that "the stent device is arranged so that the
weave of the fibrous metal adjacent its distalmost end expands more widely
than that at a proximal position, so as to create and generate an outwardly
tapered 'waffle cone' shape" (Levy i-fll ).
Principles of Law
The Examiner bears the initial burden of establishing a prima facie
case of anticipation. In re King, 801 F.2d 1324, 1326-27 (Fed. Cir. 1986).
Anticipation under 35 U.S.C. § 102 requires that "'each and every element
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as set forth in the claim is found, either expressly or inherently described, in
a single prior art reference"' In re Robertson, 169 F.3d 743, 745 (Fed. Cir.
1999).
A preamble is not limiting "'where a patentee defines a structurally
complete invention in the claim body and uses the preamble only to state a
purpose or intended use for the invention."' Catalina Mktg. Int'!, Inc. v.
Coolsavings.com, Inc., 289 F.3d 801, 808 (Fed. Cir. 2002).
Analysis
We adopt the Examiner's findings of fact and conclusions of law (see
Final Act. 2-3, 8-9; FF 1-2) and agree that Levy anticipates the claims and
that "proximal" and "distal" can refer to either end of the claimed device and
using one term or the other is a matter of nomenclature (FF 1-2). We
address Appellants' arguments below.
Appellants contend:
Levy specifically states that the stent device 20 is arranged so
that the weave of the fibrous metal adjacent its distalmost end
expands more widely than that at a proximal position of the
stent device 20, so as to create and generate an outwardly
tapered "waffle cone" shape 63. . . . This shape provides wide
enough cell openings in the weave disposed between the
efferent vessels for blood to flow therethrough .... Thus, as
shown, Levy requires an expansion at the distal end for a
particular purpose; claims 16 and 18 recite a widened section
at the proximal end.
(App. Br. 6-7) (emphasis in original). Appellants further contend:
The designations "proximal" and "distal" go beyond mere
naming conventions. Rather, these terms have distinct structural
meanings in the art indicating which end would be understood
by one of ordinary skill in the art to be the proximal end (e.g.,
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outermost to the body; directing towards the doctor applying
the medical device) and the distal end (e.g., innermost to the
body, the end being furthest away from the doctor applying the
medical device), i.e., signifying the structural features relative
to the placement of medical devices in relationship to the body
and in relationship to the doctor applying the medical device.
(App. Br. 7).
Appellants argue that "these terms are used consistently with that
accepted usage in both the instant patent application, in Levy, the cited art,
and according to the dictionary definitions of these terms" and further cite
dictionary definitions defining distal as "[a ]natomically located far from a
point of reference" and proximal as "Anat. Nearer to a point of reference
such as an origin, a point of attachment, or the midline of the body" (App.
Br. 7; cf Reply Br. 2--4). Appellants argue that these terms would be
rendered "superfluous" by not giving them their ordinary and customary
meaning (Reply Br. 3--4).
We are not persuaded by this argument. With respect to the claimed
stent, we agree with the Examiner that the "terms 'proximal end' and 'distal
end' are relative terms and there are no structural or functional limitations to
the claims indicating that the intended distal end of Levy's device can't also
be called the proximal end" (Ans. 4).
Appellants' arguments are based on the intended use (i.e. nearer or
further from the point of reference, such as the body; nearer to or further
from the doctor) rather than the structure of the device itself (App. Br. 7-8).
The words proximal and distal refer to the orientation of the device when the
device is in use in the nasal passage, that is, when used for its intended use.
The dictionary definitions reflect this by stating that these definitions are in
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reference to anatomy (i.e. by using the phrase "anatomically" or "Anat. ").
However, "the absence of a disclosure relating to function does not defeat
the Board's finding of anticipation. It is well settled that the recitation of a
new intended use for an old product does not make a claim to that old
product patentable." In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997).
Here, we adopt the Examiner's position that the stent of Levy is structurally
identical to the claimed stent, and when flipped in a particular orientation,
Levy's stent would have been capable of splinting of a nasal passage.
Although Appellants argue that the "Board has repeatedly found such
designations to provide meaning to a claim and has reversed rejections
relying on arbitrary orientation arguments made by the Examiner,"
Appellants cite cases where the difference in terminology affected the
structure and not just the intended use of the device (see App. Br. 8-9).
Specifically, in Ex parte Pham, "anterior" and "posterior" were found to be
structurally relevant, because the claim "requires the edges to be formed in
the lens' posterior optic periphery." Ex parte Pham, Appeal 2009-005134,
slip op. at 7 (BP AI 2009). Moreover, in Pham, the Board states:
In order for the optical lens to function correctly, the optical
axis and orientation must be maintained or light entering the
lens will not be properly focused on the retina .... Therefore,
in this particular situation, the labeling of anterior and posterior
has structural effects on the optic lens, differentiating these
sides structurally, rather than simply functionally.
(Id. at 8). Similar analyses apply to the other cases cited by Appellants,
Ex parte Li, Appeal 2009-005134 (BP AI 2010) and Ex parte Richardson,
Appeal 2009-003991 (BPAI 2009).
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Here, the device would not have a different structure based on its
intended use. In Schreiber, the Federal Circuit found that a claim to a
popcorn dispensing container was properly anticipated by a structurally
identical liquid dispensing top since "the absence of a disclosure relating to
function does not defeat the Board's finding of anticipation." Schreiber,
128 F.3d at 1477. The difference between the stent of claim 1 and the stent
of Levy does not reside in the structure of the device being claimed, but
rather exists in the orientation of the device as used for particular locations
in the human body. This is a change in function for the device, not a
change in structure.
Appellants contend that the Specification defines the terms
"proximal" and "distal" (App. Br. 9). Appellants also contend that the device
cannot be flipped, because the "'distal' and 'proximal' terms require a
particular structure and orientation" (App. Br. 11 ).
We find these arguments unpersuasive because even if the terms
"proximal" and "distal" were defined, they would not impose any structural
limitation on the stent itself, but rather simply reflect the orientation of the
stent when placed within a human body and therefore represent the intended
use of the stent. By way of example, if the funnel shaped popcorn container
in Schreiber was flipped over and used as a hat, oriented with the widened
section proximal to the head and the funnel end distal to the head, that use
would not structurally change the device and would not distinguish the new
hat from the popcorn funnel of Schreiber or the oil can of the prior art. See
Schreiber, 128 F.3d at 1475-76 (showing drawings of popcorn and oil
dispensers).
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Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
conclusion that the stent of Levy is structurally identical to, and anticipates,
the stent required by the claims.
B. 35 US.C. § 103(a) over Levy in view of Molaei
With respect to claim 1, the Examiner finds that Levy discloses "a
braided tubular support body (20) wherein the support body has an
essentially cylindrical shape" "in an unloaded state" (Final Act. 4). The
Examiner finds that Levy discloses that "the support body has a widened
section at its proximal end (50)," that the "widened section is closed at the
proximal end of the widened section," and that "the widened section of the
support body is ball shaped" (Final Act. 4 ).
The Examiner finds that "Levy fails to disclose the braided tubular
support body having a diameter of at least 4 mm and a length in a range of
25 to 120 mm" as recited in claim 1 (Final Act. 4).
The Examiner finds that "Molaei teaches (Figure 1) an
endoprosthesis for treating aneurysm that includes a braided tubular support
body having a diameter between 1 mm to 46 mm and a length at least about
30 mm" (Final Act. 4).
The Examiner finds it obvious to "modif[y] the stent of Levy to ...
included a diameter of at least 4 mm and a length in a range of 25 to 120 mm
. . . in order to properly secure the stent at a bifurcated aneurysm to allow
proper blood flow during treatment procedure" (Final Act. 4 ).
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The issue with respect to this rejection is: Does a preponderance of
the evidence of record support the Examiner's conclusion that Levy and
Molaei render the claims obvious?
Findings of Fact
3. Molaei teaches a tubular endoprosthesis that includes a braided
tubular support body where "prosthesis 100 can have a diameter d of
between, for example, 1 mm to 46 mm" and "prosthesis 100 can have a
length along axis ai of ... at least about 30 mm" (Molaei Fig. 1, i-f58).
Principles of Law
"In cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness." In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir.
2003); see also id. at 1330 ("[T]he existence of overlapping or
encompassing ranges shifts the burden to the applicant to show that his
invention would not have been obvious.").
Analysis
We adopt the Examiner's findings of fact and conclusions of law (see
Final Act. 3---6; FF 1-3) and agree that Levy and Molaei render claim 1
obvious. We address Appellants' arguments below.
Appellants contend "neither Levy nor Molaei is proper art against the
subject matter of the rejected claims", because neither "of these publications
is related to splinting of nasal passages. Accordingly, the cited art is
nonanalogous and is not prior art as applied to the pending claims" (App. Br.
12-13).
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We are not persuaded by this argument. The test for non-analogous
art is first whether the art is within the field of the inventor's endeavor and,
if not, whether it is "reasonably pertinent to the particular problem with
which the inventor was involved." In re Wood, 599 F.2d 1032, 1036 (CCPA
1979). "A reference is reasonably pertinent if, even though it may be in a
different field" of endeavor, it logically would have commended itself to an
inventor's attention in considering his problem "because of the matter with
which it deals." In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
The stents of Levy and Molaei are reasonably within the same field of
endeavor as the claimed stent, because all three devices share the same
medical goal of supporting tissue "to prevent a collapse" (Spec. 10:24).
Compare this with Levy, who teaches supporting tissue with "openings in
the weave disposed between the efferent vessels for blood to flow
therethrough" (Levy i-f 11) and Molaei who teaches "the passageway can be
reopened or reinforced ... with a medical endoprosthesis" (Molaei i-f 3).
Even if we treated a stent for keeping the nasal passages open as a
distinct field of endeavor from a stent for keeping other body lumens open,
Molaei recognizes the "body includes various passageways such as arteries,
other blood vessels, and other body lumens" (Molaei i-f 3). Thus, Molaei's
teachings regarding the size of stents would have reasonably suggested
themselves to the ordinary artisan, concerned with the stents of Levy (FF 1-
2).
In addition, in ICON the Court found that
an inventor considering a hinge and latch mechanism for
portable computers would naturally look to references
employing other "housings, hinges, latches, springs, etc.,"
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which in [In re Paulsen, 30 F.3d 1475, 1481-82 (Fed. Cir.
1994)] came from areas such as "a desktop telephone directory,
a piano lid, a kitchen cabinet, a washing machine cabinet, a
wooden furniture cabinet, or a two-part housing for storing
audio cassettes."
In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1380 (Fed. Cir. 2007).
The instant situation is similar to that of ICON and Paulsen, since in the
instant case an ordinary practitioner considering stents would look to both
Levy and Molaei, who teach stents for medical purposes (FF 1-3).
Appellants contend "there is no logical basis in the combination of
Levy and Molaei to use the aneurysm stent of Levy with the dimensions of
Molaei for a stent for splinting of a nasal passage" (App. Br. 14).
We are not persuaded. Both Levy and Molaei teach devices for use
with aneurysms. Molaei provides a motivation for using the claimed
dimensions with stents for aneurysms. The device taught by Levy, as
modified by Molaei, has the same structure and dimensions as the claimed
device. That the prior art has a different reason or motivation to combine the
stents of Levy and Molaei is of no moment as long as there is a sufficient
reason to make the combination. See In re Kemps, 97 F.3d 1427, 1430 (Fed.
Cir. 1996). ("[T]he motivation in the prior art to combine the references does
not have to be identical to that of the applicant to establish obviousness.").
Appellants contend that "there is no logical basis for using the stent of
Levy in the opposite direction since the expanded portion of Levy is for use
distally, in this case, inside the body, and the widened portion of the stent of
claim 1 is at the proximal end" (App. Br. 14).
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This argument does not persuade us that the Examiner erred. The
claims are not directed to a method of use, but rather to a device that is
capable of being used for splinting of a nasal passage. "[A ]pparatus claims
cover what a device is, not what a device does." Hewlett-Packard Co . v.
Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990). Thus, the
combination of Levy and Molaei does not have to teach using the device to
splint the nasal passage, but rather a device that is identical to the claimed
device and capable of splinting of the nasal passage. Appellants provide no
rebuttal evidence that the prior art differs structurally or would be incapable
of functioning as a nasal stent.
Appellants contend that the "asserted modification of Levy would
result in both changing the operation of the Levy device and in rendering the
Levy device unsatisfactory for its intended purpose" (App. Br. 14).
Appellants also argue that Levy and the claimed device are used differently
and there is "no logical basis for reversing the structure in view of the
distinct uses taught in the instant application and in Levy" (App. Br. 15).
We are not persuaded. As explained above, the terms "proximal" and
"distal" refer to how the device is intended to be used in the body, but are
simply the nomenclature used to distinguish the two ends, with no change in
its overall structure. There is no structural modification of the device of
Levy and it is not being modified in any way by referring to the proximal
end as distal and the distal end as proximal. Appellants provide no
reasoning as to why the naming convention used would prevent the device
of Levy from operating as a nasal stent.
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As already noted, "apparatus claims cover what a device is, not
what a device does. " Hewlett-Packard, 909 F.2d at 1469.
With respect to claims 3, 5-8, 10, 17, and 20, Appellants argue that
these claims are patentable for the same reasons as claim 1. App. Br. 16-22.
We disagree for the reasons discussed above.
Claim 3
With respect to claim 3, Appellants argue that claim 3 is directed to a
"stent wherein a widened section at the proximal end has a diameter of at
least 10 mm. This is larger than the diameter of the prosthesis of Molaei for
use in a prosthesis for treating aneurysm ... " and that the result of
combining of Levy and Molaei "would not be a stent with a diameter of the
widened section at the proximal end of at least 10 mm" (App. Br. 16-17).
We are not persuaded by this argument that the Examiner erred. Levy
teaches the drip chamber 50 (widened section) has an expanded diameter of
about 10 mm (Levy i-f 10). Levy further teaches to optimize the size based
on the aneurysm, teaching the "drip chamber 50 itself is arranged to expand
to a diameter larger than the diameter of the neck 60 of the aneurysm 62 so
as to permit a blocking nesting engagement therewith" (Levy i-f 39). See
Peterson, 315 F.3d at 1330 (A "slight overlap in range establishes a prima
facie case of obviousness.")
Claims 5-6
Appellants argue that the "stent of claim 5 would not have been
obvious from the disclosure of Levy wherein the expanded portion of the
device is at the distalmost end, completely converse from the subject matter
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of claim 5" and argue that the "the widened section of Levy is at the distal
end" (App. Br. 18-19).
We are not persuaded because Levy clearly teaches that the widened
end is expandable (see Levy i-f 10). As explained above, the terms
"proximal" and "distal" are simply names used to distinguish each side.
"[A ]pparatus claims cover what a device is, not what a device does,"
Hewlett-Packard, 909 F.2d at 1469. Although Levy teaches using the
device in an aneurysm, the device must only be capable of the intended use
of "splinting a nasal passage." The references do not have to disclose using
the device to splint a nasal passage.
Claim 7
Appellants argue, with regard to claim 7 which recites "an elastic wire
with a diameter of 0.001 to 2 mm," that there is "no logical basis for
determining the diameter of elastic wire for use in a stent for splinting a
nasal passage as blood vessels do not possess nerves whereas the nose is full
of nerves and extremely sensitive" (App. Br. 20).
We are not persuaded. Levy teaches that the stent may be made of
metal that is expandable (i.e., elastic) (Levy i-f 9) and teaches that the stent is
composed of wire (FF 1-2). There is no objective evidence that the wire
size needed for an aneurysm stent would differ from that of one used in the
nose, or would be outside of the claimed range of 0.001 mm (1 µm) and 2
mm. Appellants provide no evidence, as opposed to attorney argument, to
show that the claimed invention differs from the one made obvious by the
cited references. See In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974)
("Attorney's argument in a brief cannot take the place of evidence.").
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Claim 8
Claim 8 recites specific sizes for the support body diameter and
length. Appellants contend that:
Molaei actually describes an endoprosthesis for treating
aneurysm as having a diameter of from about 2 mm to
about 6 mm. If one of skill in the art modified the stent of
Levy according to Molaei for use in an aneurysm, the
diameter as taught by Molaei would not be 15 to 20 mm but,
rather, 2 mm to 6 mm. In addition, the exemplary
embodiment which appears to be related to treatment of an
aneurysm teaches a length of about 15 mm. Thus, the
diameter and length of the claimed stent would not have
been obvious from the combination of Levy and Molaei,
both directed to use in blood vessels for treatment of
aneurysms.
(App. Br. 21).
We find this argument unpersuasive because Molaei teaches that the
diameter can be 1--46 mm and that the length can be at least 30 mm (FF 3).
Thus, the dimensions recited in claim 8 are taught in Molaei. A reference
may be relied upon for all that it would have reasonably suggested to one
having ordinary skill in the art, including nonpreferred embodiments. See
Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 807 (Fed. Cir. 1989).
Thus, although 2 mm to 6 mm are preferred for certain uses, this does not
teach away from the larger diameter because it does not discourage or
otherwise dissuade from the greater lengths taught by Molaei (FF 3).
Claim 10
Appellants contend that the proximal end of Levy is tapered instead of
the distal end as recited in the claim.
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We are not persuaded because, as already noted, Levy teaches that the
widened end is expandable. As explained above, the terms "proximal" and
"distal" do not structurally distinguish the apparatus of Levy from the
claimed device, but rather are directed to the intended use of the device.
Conclusion of Law
A preponderance of the evidence of record supports the Examiner's
conclusion that the combination of Levy and Molaei render the claims
obvious.
C. 35 US.C. § 103(a) over Levy, Molaei, and Rosqueta
Claim 4
Appellants contend that "Rosqueta is nonanalogous art for the same
reasons discussed above with regard to Levy and Molaei. Rosqueta is
directed to embolic implants and delivery systems" and that "Rosqueta is not
from the same field of endeavor as the rejected claims, and is not reasonably
pertinent to the particular problem the instant inventors were trying to solve"
(App. Br. 23).
We are not persuaded for the reasons already discussed. Here, the
stent device of Levy, the endoprosthetic stent of Molaei, and the implant
stent of Rosqueta all share the goal with the Specification's stent of having
structural support associated with the claimed device (see Spec. 10:24 "to
prevent a collapse"; Levy i-f 43 "prevents any undesired collapse"; Molaei
i-f 3 "the passageway can be reopened or reinforced ... with a medical
endoprosthesis"; Rosqueta i-f 28 "adequate radial force to anchor its
position"). Moreover, all the devices share structural similarity with the
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claimed device, as all the devices are wire based stents. See ICON, 496 F .3d
at 1380. Consequently, the ordinary artisan would have had reason to look
at other references employing stents.
Appellants contend that the "modified stent of Levy with the
dimensions of Molaei modified by Rosqueta would not result in a stent with
a fixation section positioned at the proximal end of the stent" but rather "at
the distal end of the device and, furthermore, would detrimentally [a ]ffect
functionality of airflow in the nasal airway" (App. Br. 24).
We are not persuaded. Rosqueta teaches that the fixation section is on
the end of the device that is present in the aneurysm, specifically Rosqueta
teaches a wire braid ball implant for occluding blood flow at endovascular
sites that includes a fixation section (30) positioned at one end of the stent in
the aneurysm (see Rosqueta Fig. IA, i-fi-19, 73). Levy teaches that the
widened end of the device is present in the aneurysm. Thus, when
modifying the stent of Levy with the fixation device of Rosqueta, one would
place the fixation section on the widened end of Levy. Although this is
referred to as the "distal end" in Levy and Rosqueta, as explained above the
names are arbitrary, as they reflect the intended use of the device and do not
require a structural difference between the two ends. Finally, Appellants
provide no evidence that placing the widened end outside of the nose would
detrimentally affect the functionality of airflow in the nasal airway. See In
re Pearson, 494 F.2d 1399, 1405 (CCPA 1974) ("Attorney's argument in a
brief cannot take the place of evidence."). See also In re De Blauwe, 736
F.2d 699, 705 (Fed. Cir. 1984) (Arguments and conclusions unsupported by
factual evidence carry no evidentiary weight.)
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Appellants contend that there is "no logical basis for the contention
that the combination of Levy, Molaei and Rosqueta would suggest a stent
with a fixation section wherein the fixation section protrudes from the nostril
of the user during fixation of the fixation section and can be fixed outside of
the nose" (App. Br. 24).
We are not persuaded. The claims are not directed to a method of use,
but rather a device that is capable of performing these functions. Hewlett-
Packard, 909 F .2d at 1469. As long as the device rendered obvious by
Levy, Molaei, and Rosqueta suggests the structure required by the claim,
merely stating an intended use for the stent device is not sufficient to
distinguish the apparatus from the prior art. See Schreiber, 128 F.3d at
1477.
Claims 14 and 15
Appellants contend that claims 14 and 15 are patentable for the same
reasons as claim 1, including the non-analogous art argument (App. Br. 25).
We disagree for the reasons discussed above.
Appellants contend that elements for insertion and deployment of the
device "are not appropriate for repeated use, the more by patients by
themselves, as loading of the stent device is quite complex and complicated"
(App. Br. 25).
We are not persuaded because there is no limitation in claims 14 and
15 requiring repeated use. See In re Self, 671F.2d1344, 1348 (CCPA 1982)
("[A]ppellant's arguments fail from the outset because ... they are not based
on limitations appearing in the claims.").
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Appeal2017-005289
Application 13/983,028
Conclusion of Law
The evidence of record supports the Examiner's conclusion that the
combination of Levy, Molaei, and Rosqueta renders the claims obvious.
SUMMARY
In summary, we affirm the rejection of claim 16, 18, and 19 under
35 U.S.C. § 102(b) as anticipated by Levy.
We affirm the rejection of claims 1, 3, 5-8, 10, 17, and 20 under
35 U.S.C. § 103(a) as obvious over Levy and Molaei.
We affirm the rejection of claims 4, 14, and 15 under 35 U.S.C.
§ 103(a) as obvious over Levy, Molaei, and Rosqueta.
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
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