Ex Parte Searle

Board of Patent Appeals and Interferences

Sep 24, 2009

10726110 (B.P.A.I. Sep. 24, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GARY SEARLE
____________________

Appeal 2009-005186
Application 10/726,110
Technology Center 3700
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Decided: September 24, 2009
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Before: WILLIAM F. PATE, III, STEFAN STAICOVICI and
FRED A. SILVERBERG, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-005186
Application 10/726,110

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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from a rejection of claims 1,
3-7, 9-14, 16-231, 76 and 77. Claims 2, 8, 15, 24-75 and 78-105 have been
withdrawn. App. Br. 2. We have jurisdiction under 35 U.S.C. § 6(b).
Claims 1, 3-7, 9-14, 16-23 are directed to a stent, and claims 76 and
77 are directed to an apparatus for dilating or occluding a vessel. Claims 1
and 76, reproduced below, are illustrative of the claimed subject matter:

1. A stent comprising:
a generally cylindrical stent body having proximal and
distal opposing ends with a body wall having a surface
extending therebetween;
an expandable filler material uniformly bonded to a thin
sheet rolled upon itself having a circumference extending
around a longitudinal stent axis; and
a barrier film for encapsulating said stent.

76. An apparatus for dilating or occluding a vessel, the
apparatus comprising:
a mechanical element that conforms to a cylindrical
shape whose natural or unrestrained state is slightly
larger than the intended inner diameter of the vessel
following dilation, the element is restrained to a smaller

1 Although the Examiner’s Answer denominates the rejection of claims 17
and 18 as a new grounds of rejection, this rejection is not considered a new
grounds of rejection, since Appellant had been given a fair opportunity to
respond to this rejection. Claims 17 and 18 were indicated as rejected in both
of Appellant’s Briefs and on the Office Action Summary accompanying the
Final Rejection mailed January 20, 2006. Although the claim numbers were
not specifically mentioned in the statement of rejection in the Final
Rejection, the Examiner addressed the limitations of claims 17 and 18, thus
giving Appellant a fair opportunity to respond. See Final Rej. 3:7-8. We
therefore consider the rejection of claims 17 and 18 in the Answer a
correction of a typographical error and not a new grounds of rejection.
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diameter to allow placement to the target site using a
percutaneous catheteral procedure, in the constrained
state, the element exerts an outward force that, if
unrestrained, would allow the element to expand to the
natural state, the element is restrained mechanically by
means of materials whose properties change over time
due to exposure to blood protein, serum, enzymes, or
changes in pH, these materials dissolve, expand or
undergo changes in their physical properties to allow the
element to expand slowly to the natural state.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Smith US 5,824,046 Oct. 20, 1998
Martin US 6,042,605 Mar. 28, 2000
Lentz US 6,428,571 B1 Aug. 6, 2002
Khosravi US 6,458,152 B1 Oct. 1, 2002
Yang US 6,517,575 B1 Feb. 11, 2003

The Examiner rejected claims 76 and 77 under 35 U.S.C. § 102(e) as
being anticipated by Yang. Ans. 4.
The Examiner rejected claims 1, 4, 5, 9-14, and 16-23 under 35
U.S.C. § 103(a) as being unpatentable over Khosravi and Yang. Ans. 4.
The Examiner rejected claim 3 under 35 U.S.C. § 103(a) as being
unpatentable over Khosravi, Yang, and Martin. Ans. 7.
The Examiner rejected claim 6 under 35 U.S.C. § 103(a) as being
unpatentable over Khosravi, Yang, and Lentz. Ans. 7.
The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as being
unpatentable over Khosravi, Yang and Smith. Ans. 8.
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FINDINGS OF FACT
1. Khosravi discloses a stent 20, 35 having a coiled sheet portion 21(“a
generally cylindrical body”). The sheet 21 has expandable graft material
22 (“an expandable filler material”) uniformly bonded thereto. Col. 5, ll.
28-31; col 9, ll. 5-6; figs. 1-3.
2. Khosravi employs outer sheath 44 (“a barrier film”) to maintain the stent
35 in a contracted configuration prior to deployment. Col. 9, ll. 23-36;
fig. 5A.
3. Khosravi employs a mechanical expander 45 to expand and deploy the
stent 35 in the body lumen 200. Col. 9, ll. 37-40.
4. Khosravi fails to disclose an expandable filler material uniformly bonded
to a thin sheet.
5. Yang teaches that a non-water absorbable material 10 (“a thin sheet” or
“mechanical element”) may be bonded to a water absorbable material 12
(“an expandable filler material” or “materials whose properties change
over time”) and rolled into a tube 21 in order to form a self-expanding 26
or self-contracting 22 stent. Col. 2, ll. 38-58; col. 4, ll. 6-47; fig. 2.
6. Yang teaches that it is known in the art to provide a removable sheath
about a stent prior to delivery. Col. 4, ll. 54-63.
7. Yang expressly suggests that more than two layers may be employed.
Col. 5, ll. 8-11.

ANALYSIS
Appellant argues the rejected claims 76 and 77 as a group. App. Br.
11-18. We select claim 76 as the representative claim, and claim 77 stands
or falls with claim 76. 37 C.F.R. § 41.37(c)(1)(vii)(2007). Appellant
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contends that the Examiner erred by determining that claim 76 is anticipated
by Yang, because the Yang device does not operate in the same fashion as
the present invention to perform an identical function. App. Br. 12.
Appellant notes the differences between the embodiment described in
Appellant’s Specification and Yang’s device, and contends that Yang’s
device could not be used for occlusion in the same manner as Appellant’s
device. App. Br. 12-18; Reply Br 2-3.
The claims, not the Specification, must define the invention in such a
way as to distinguish it from the prior art. In re Vamco Machine and Tool,
Inc., 752 F.2d 1564, 1577 n. 5 (Fed. Cir. 1985). Where Appellant’s remarks
do not point to any specific language within the claims to distinguish over
the prior art, those remarks amount to a general allegation that the claims
define a patentable invention. App. Br. 12-18. Such allegations will not be
considered an argument for separate patentability. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
A claim is anticipated if each and every element as set forth in the
claim is found, either expressly or inherently described, in a single prior art
reference. Verdegaal Bros., Inc. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987) (emphasis added). Although the claims are interpreted in
light of the specification, limitations from the specification are not read into
the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
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. See In re
Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). While features of an apparatus
may be recited either structurally or functionally, claims directed to an
apparatus must be distinguished from the prior art in terms of structure
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rather than function. See e.g., In re Schreiber, 128 F.3d 1473, 1477-78 (Fed.
Cir. 1997).
Yang discloses each and every limitation of claim 76. Fact 5. Claim
76 is directed to an apparatus for dilating or occluding a vessel. Dilation is
again mentioned in the body of the claim and Appellant does not point to
any language within the claim that indicates that the claimed apparatus’ use
is confined to occlusion. Ans. 8-10. The fact that the mechanical element
may expand to a natural or unrestrained state that is slightly larger than the
intended diameter of the vessel does not mandate occlusion as Appellant
suggests, since the materials that mechanically restrain the element may also
dissolve or expand, thereby resulting in dilation and not necessarily
occlusion. App. Br. 17. Furthermore, Appellant’s alternative language
indicates that the claimed apparatus need not be used only for occluding but
may also be used for dilating—a function which Appellant does not dispute
that Yang’s device is capable of performing. Ans. 8, 10. Appellant has
therefore not established that the Examiner erred by determining that Yang
discloses each and every element of claim 76 or that Yang would be
incapable of performing the recited function of “dilating or occluding.”
Appellant argues the rejected claims 1, 4, 5, 9-14, 16 and 19-23 as a
group. App. Br. 18-21. We select claim 1 as the representative claim, and
claims 4, 5, 9-14, 16 and 19-23 stand or fall with claim 1. 37 C.F.R.
§ 41.37(c)(1)(vii). Since no separate arguments are presented regarding the
rejection of claims 17 and 18, these claims will also stand or fall with claim
1. Appellant contends that the usage of the Khosravi device differs from the
usage of the device described by Appellant. App. Br. 20. Appellant reiterates
the arguments set forth regarding the rejection under 35 U.S.C. § 102(e) as
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being anticipated by Yang, specifically noting that the purpose of the water
absorbing material in Yang is for deployment only; occlusion of the vessel
does not occur in Yang and Yang employs a moisture absorbing material
having different properties than Appellant. App. Br. 21.
Khosravi discloses the basic structure of claim 1, however, Khosravi
employs a mechanical expander to expand and deploy the stent. Facts 1-4.
Yang teaches using a device that will self-expand upon exposure to water
within the body. Fact 5. Yang suggests using the disclosed device with
additional layers and/or an outer sheath material. Facts 6-7. Using Yang’s
self expanding device in place of the mechanical expander of Khosravi
amounts to the simple substitution of known elements with predictable
results. Such substitution would also predictably improve Khosravi’s device
by eliminating the need for a mechanical expander. Ans. 5-6. Thus, the
subject matter of claim 1 involves no more than the predictable use of prior-
art elements according to their established functions and would have been
obvious to one having ordinary skill in the art. See KSR Int’l Co. v. Teleflex
Inc., 550 U.S. 398, 417 (2007). Appellant has not addressed the rationale set
forth by the Examiner for concluding that the subject matter of claim 1
would have been obvious to one having ordinary skill in the art. Ans. 5-6.
Appellant is required to specifically point out the supposed errors in the
Examiner’s action. See 37 CFR 1.111(b). While Appellant discusses
Khosravi and Yang individually (App. Br. 20-21), nonobviousness cannot be
established by attacking the references individually when the rejection is
predicated upon a combination of prior art disclosures. Ans. 10; See In re
Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
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Furthermore, regarding Appellant’s discussion of Yang, as noted
above, it is the claims that must distinguish the invention from the prior art,
and claims directed to an apparatus must be distinguished from the prior art
in terms of structure rather than function. Arguing differences that do not
appear in the claims or that the prior art has a different intended use or
functions in a different way does not, without more, distinguish the claimed
invention from the prior art. Ans. 10-11. In the Reply Brief, Appellant
makes broad allegations that Yang teaches away from the present invention
(Reply Br. 4), the combination of Khosravi and Yang would not yield a
workable system (Reply Br. 5), and Khosravi involves a differing
technology (Reply Br. 6). However, Appellant does not provide any further
support for any of these allegations. Again, where an Appellant’s remarks do
not point to any specific language within the claims to distinguish over the
prior art, those remarks amount to a general allegation that the claims define
a patentable invention. App. Br. 20-27; Reply Br 4-7. Such allegations will
not be considered an argument for separate patentability. 37 C.F.R. §
41.37(c)(1)(vii) (2007).
Regarding the rejections of claims 3, 6 and 7, the Examiner has relied
upon Martin, Lentz, and Smith, respectively, to demonstrate that it would
have been obvious to incorporate the claimed materials into the device
taught by Khosravi and Yang. While Appellant discuses the differences
between the devices disclosed in Martin, Lentz, and Smith, and the device
described by Appellant, Appellant does not dispute the Examiner’s findings
related to these references. App. Br. 21-27; Ans. 7-8. Accordingly,
Appellant has not established that the Examiner erred in concluding that the
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subject matter of claims 3, 6 and 7 would have been obvious to one having
ordinary skill in the art.
CONCLUSIONS OF LAW
Appellant has not established that the Examiner erred by determining
that claim 76 is anticipated by Yang. Appellant has not established that the
Examiner erred in concluding that the subject matter of claim 1 would have
been obvious over Khosravi and Yang. Appellant has not established that the
Examiner erred in concluding that the subject matter of claims 3, 6 and 7
would have been obvious to one having ordinary skill in the art.

DECISION
For the above reasons, the Examiner's rejections of claims 1, 3-7, 9-
14, 16-23, 76 and 77 are 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). See 37 C.F.R. §
1.136(a)(1)(iv) (2007).

AFFIRMED

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