Ex Parte Ryan et al

Patent Trial and Appeal Board

Jan 7, 2015

11329440 (P.T.A.B. Jan. 7, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte TIMOTHY R. RYAN and JACK LEMMON
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Appeal 2012-007237
Application 11/329,440
Technology Center 3700
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Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
ULRIKE W. JENKS, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal1 under 35 U.S.C. § 134 involving claims to a stent
cover for enclosing a compressible stent during a stent crimping process.
The Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.

1 Appellants identify the Real Party in Interest as Medtronic, Inc.
(see App. Br. 3).
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Application 11/329,440

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Statement of the Case
Background
In preparing a cardiac “valve for percutaneous implantation, the
stented valve can be initially provided in an expanded or uncrimped
condition, then crimped or compressed around the balloon” (Spec. 2, ll. 5–
7). “Because the stented valve . . . must be kept sterile, any crimping device
with which the stented valve comes in contact must likewise be sterile”
(Spec. 2, ll. 17–19). For larger valves, “tabletop crimping devices that can
apply more compressive force to the stented valve may be used. . . . . [T]hey
typically must be disassembled, cleaned, and sterilized before and/or after
each crimping procedure” (Spec. 2, ll. 26–30).
The Claims
Claims 1–12 and 24 are on appeal.2 Independent claim 1 is
representative and reads as follows:
1. A stent cover for enclosing a compressible stent during a stent
crimping process, the stent cover comprising an outer sheath having a
single-piece construction and comprising:
a proximal end;
a closed distal end;
a generally cylindrical end portion extending from the closed
distal end of the sheath toward the proximal end and having an inner
diameter for at least partially surrounding a tip of a catheter;
a generally cylindrical stent-retaining portion adjacent to the
end portion and having an uncompressed inner diameter that is larger
than the inner diameter of the end portion for retaining a stent in an
uncompressed condition;

2 Claims 13–23 and 25–31 were withdrawn from consideration
(see App. Br. 5).
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a locating portion adjacent to the stent-retaining portion and
having a larger inner diameter than the uncompressed inner diameter
of the stent-retaining portion; and
a flange extending from a proximal end of the locating portion,
wherein the flange extends beyond an outer diameter of the locating
portion at the proximal end of the sheath.

The issues
A. The Examiner3 rejected claims 1–3 and 5–11 under 35 U.S.C.
§ 103(a) as being obvious over Burt4 and Dunajeff5 (Ans. 5–9).
B. The Examiner rejected claims 4 and 24 under 35 U.S.C. § 103(a) as
being obvious over Burt, Dunajeff, and Beer6 (Ans. 9–10).
C. The Examiner rejected claim 12 under 35 U.S.C. § 103(a) as being
obvious over Burt, Dunajeff, and Zar7 (Ans. 10–11).
A. 35 U.S.C. § 103(a) over Burt and Dunajeff
The Examiner finds that the syringe “structure of Burt was considered
capable of performing the cited intended use of covering a stent during
crimping” (Ans. 5). The Examiner finds that Burt’s syringe satisfies most of
the structural requirements of claim 1 but “fails to disclose the locating
portion’s inner diameter being larger than the uncompressed diameter of the
stent retaining portion” (Ans. 6–7; emphasis omitted).

3 The Examiner inadvertently included claims 4 and 24 in the
statement of this rejection (cf. Ans. 5, 9).
4 Burt et al., US 5,074,848, issued Dec. 24, 1991.
5 Dunajeff, L.A., US 2,150,738, issued Mar. 14, 1939.
6 Beer et al., Mechanics of Materials, Appendix B 700, 702
(McGraw Hill 1992).
7 Zar, J.L., US 2,812,231, issued Nov. 5, 1957.
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The Examiner finds that “Dunajeff teaches a syringe that gets larger
as it goes from tip to end” (Ans. 7). The Examiner finds it obvious to
“modify the sheath of Burt to have the inner diameter of the locating portion
be larger than the uncompressed diameter of the stent retaining portion in
order to accommodate a syringe of a different shape, such as the one
disclosed by Dunajeff” (Ans. 7).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner’s conclusion that Burt and Dunajeff render the
claims obvious?
Findings of Fact
1. Figure 3 of the Specification is reproduced below:

Figure 3 shows that distal “end portion 52 extends to cover the tapered
tip 118 . . . . The stent-retaining portion 54 preferably has a larger diameter
than the end portion 52 . . . . The locating portion 56 of stent cover 50 has a
larger diameter than the stent-retaining portion 54 . . . the locating portion 56
extends from the shoulder 64 to another shoulder 66 provided as a transition
between locating portion 56 and flange 58” (Spec. 12, l. 13 to 13, l. 17).
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2. Figure 5 of Burt, and Figure 5 as annotated by the Examiner,
are reproduced below:

Figure 5 shows “a complete housing 30 that is constructed to hold a syringe
31 . . . either with or without an attached needle 32 . . . the operator grasps
the cradle portion 34 that includes parallel spaced apart flange rings 38 and
39 for use as stabilizers” (Burt, col. 3, l. 49 to col. 4, l. 1; see also Ans. 12).
3. Burt teaches that the “end piece 35 that is held in place until use
by plastic welds, or the like, not shown, that may be easily broken by a slight
twist. To access a syringe contained within the housing 30, the end piece 35
is twisted off and the upper portion is bent upwardly breaking at a plastic
weld 37” (Burt, col. 3, ll. 56–61).
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4. Figure 2 of Dunajeff is reproduced below:

“Fig. 2 is an outside view of the syringe with the spring set for operation and
the sleeve set for withdrawing the piston from the plunger” (Dunajeff, col. 2,
ll. 13–15).
Principles of Law
A prima facie case for obviousness “requires a suggestion of all
limitations in a claim,” CFMT, Inc. v. Yieldup Int’l Corp., 349 F.3d 1333,
1342 (Fed. Cir. 2003) and “a reason that would have prompted a person of
ordinary skill in the relevant field to combine the elements in the way the
claimed new invention does.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
418 (2007).
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Analysis
Appellants note that the “Examiner refers in the Office Action to the
area of a flange ring 38 of Burt as equivalent to a ‘flange with enlarged
planar ring’” (App. Br. 13). Appellants contend that
[E]ven if the flange ring 38 could be considered to be a part
of a “locating portion”, then there is no additional “flange”
that can be said to be “extending from a proximal end of the
locating portion”, as in claim 1, since there is no structure of
the Burt receptacle that extends from a proximal end of a
locating portion, where the locating portion has a larger
inner diameter than a stent-retaining portion.

(App. Br. 13.)
The Examiner “respectfully disagrees and refers to the Annotated
Figure 5” (Ans. 12).
We find that Appellants have the better position. Claim 1 requires a
device with four separate portions, with a distal end portion adjacent to a
larger diameter stent-retaining portion adjacent to an even larger diameter
locating portion adjacent to a flange which extends to a greater diameter.
This is clearly depicted in Figure 3 of the Specification (FF 1).
While the Examiner is encouraged to apply the broadest reasonable
interpretation, we find the Examiner’s interpretation unreasonable in this
instance. That is, there is no reason to interpret part of the diameter of
Burt’s syringe between the “parallel spaced apart flange rings 38 and 39 for
use as stabilizers” (FF 2) as a “locating portion” simply in order to permit
the larger end of Burt’s syringe to become the “flange.” See In re Cortright,
165 F.3d 1353, 1358 (Fed. Cir. 1999) (“Although the PTO must give claims
their broadest reasonable interpretation, this interpretation must be consistent
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with the one that those skilled in the art would reach.”) Without such an
interpretation, there is simply no equivalent taught by either Burt or
Dunajeff for a flange which “extends beyond an outer diameter of the
locating portion at the proximal end of the sheath” as required by claim 1.
We also find the Examiner’s reason for combining unpersuasive. The
Examiner finds it obvious that “to fit the syringe of Dunajeff snugly and
securely into the cover of Burt, the locating portion’s inner diameter would
have to be larger than the uncompressed diameter of the stent retaining
portion” (Ans. 7). However, Burt already has a proximal end portion
identified by the Examiner as the “Flange” which is larger in internal
diameter (FF 2) for accommodation of the syringe of Dunajeff. The
Examiner provides no reason to maintain the enlarged internal diameter
“Flange” portion of Burt to accommodate Dunajeff’s syringe, while also
expanding the internal diameter of the portion identified by the Examiner as
the “locating portion.” The Examiner’s combination would result in a cover
with two portions of the cover with enlarged internal diameters while
Dunajeff’s syringe only requires one such enlarged internal diameter
portion, represented by the “Flange” of Burt. Therefore, there would have
been no reason to enlarge the internal diameter of the locating portion and
further enlarge the internal diameter of the flange portion of the cover of
Burt rather than simply extending the length of the already larger internal
diameter “Flange” portion of Burt to fit and cover the syringe of Dunajeff.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Burt and Dunajeff render the claims obvious.
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B–C. 35 U.S.C. § 103(a) rejections
These rejections rely upon the underlying obviousness rejection over
Burt and Dunajeff. Having reversed this rejection, we also necessarily
reverse the further obviousness rejections because Beer and Zar are not
relied upon to teach the components required by claim 1.
SUMMARY
In summary, we reverse the rejection of claims 1–3 and 5–11 under
35 U.S.C. § 103(a) as being obvious over Burt and Dunajeff.
We reverse the rejection of claims 4 and 24 under 35 U.S.C. § 103(a)
as being obvious over Burt, Dunajeff, and Beer.
We reverse the rejection of claim 12 under 35 U.S.C. § 103(a) as
being obvious over Burt, Dunajeff, and Zar.

REVERSED

cdc