Ex Parte Sherry

Patent Trial and Appeal Board

Aug 29, 2016

13874693 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/874,693 05/01/2013
11050 7590 08/31/2016
SEAGER, TUFTE & WICKHEM, LLP
100 South 5th Street
Suite 600
Minneapolis, MN 55402
FIRST NAMED INVENTOR
John Sherry
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.
2001.1413103 5801
EXAMINER
HIGHLAND, RACHEL S
ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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):
BSC.USPTO@stwiplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN SHERRY
Appeal2014-007916
Application 13/874,693
Technology Center 3700
Before MICHELLE R. OSINSKI, THOMAS F. SMEGAL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL
STATEivIENT OF THE CASE
John Sherry (Appellant) 1 appeals under 35 U.S.C. § 134 from the
Examiner's final decision rejecting claims 1 and 3-20, which are all of the
pending claims. We have jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM and designate our affirmance as containing NEW
GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b).
1 Appellant identifies the real party in interest as Boston Scientific Scimed,
Inc. Appeal Br. 3.
Appeal2014-007916
Application 13/874,693
THE CLAIMED SUBJECT MATTER
Claims 1, 11, and 16 are independent. Claim 1, reproduced below, is
illustrative of the claimed subject matter on appeal.
l, A removable stent fcir providing reinforcement to a selected
region of a selected body lumen including a resilient cylindrical
layer) the stent is radially expandable from a first reduced
diarneter configuration to an expanded configuration) the
removable stent comprising:
at least one bioresorbable extn1sion exterior from the
resilient cylindrical layer for resisting migration of the removab1e
stent when said removab1e stent is positioned in said selected
region of said selected body lumen when the stent is in its
expanded configuration said at least one extrusion resists
migration of the removable stent when said removable stent
is positioned in said selected region of said selected body lumen.
EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Kleshinski
Chouinard
Chobotov
Sherry
us 5,540,712
us 6,156,064
US 7,147,661 B2
US 8,444,688 B2
REJECTIONS
July 30, 1996
Dec. 5, 2000
Dec. 12, 2006
May 21, 2013
I. Claims 1, 3, 4, 6-9, 11-14, 16-18, and 20 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Chobotov and Kleshinski.
Final Act. 2--4.
II. Claims 5, 10, 15, and 19 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Chobotov, Kleshinski, and Chouinard. Id. at 4--5.
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Application 13/874,693
III. Claims 1 and 3-20 stand rejected on the ground of nonstatutory
double patenting over claims 1-12 of Sherry. Id. at 6-7. 2
OPINION
Rejection I
Appellants argue claims 1, 3, 4, 6-9, 11-14, 16-18, and 20 as a group.
Appeal Br. 10-14. We select claim 1 as the representative claim, and claims
3, 4, 6-9, 11-14, 16-18, and 20 stand or fall therewith. 37 C.F.R.
§ 41.37(c)(l)(iv) (2013).
The Examiner finds that Chobotov teaches all of the limitations of
independent claim 1 (including, inter alia, a removable stent) except for the
extrusion being bioresorbable. Final Act. 2--4. The Examiner finds that
Kleshinski teaches "a stent structure having extrusions or barbs (2) that can
be made ofbioresorbable material." Id. at 4 (citing Kleshinski, 4:21-24).
The Examiner also finds that "[bioresorbable material] is known in the art to
provide the advantage of allowing for ease in removing the stent when it is
no longer needed." Id. The Examiner concludes that it would have been
obvious to one of ordinary skill in the art "to modify the barbs of Chobotov
to be made ofbioresorbable material to allow for easy removal of the stent
structure." Id.
2 Even though the double patenting rejection is not reproduced in the
Answer, the Answer states that "[ e ]very ground of rejection set forth in the
Office [A ]ction dated December 23, 2013 from which the appeal is taken is
being maintained by the Examiner except for the grounds of rejection (if
any) listed under the subheading 'WITHDRAWN REJECTIONS."' Ans. 2.
There are no grounds of rejection listed under such a subheading as being
withdrawn.
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Application 13/874,693
Appellant argues that Chobotov fails to teach a removable stent in that
Chobotov teaches endovascular stent grafts that are designed to last over the
life of the patient. Appeal Br. 10-11; Reply Br. 2-3. Appellant's argument
appears to be premised on a narrow interpretation of "removable stent" in
which removal of the stent must be contemplated at the time of its
placement. The Examiner responds that the term "removable" merely
"amounts to an intended use for the device" and that the claims merely
require that the stent be capable of being removed because the claims as
drafted do not "impose any time constraints or requirements for when and
how the stent is removed." Ans. 5. The Examiner finds that "the device of
Chobotov is capable of being removed" even if "Chobotov does not
contemplate removal of the stent." Id.
We agree with the Examiner that the claims are not limited to stents
that are intended or contemplated to be removed, as opposed to stents that
are merely capable of being removed. During prosecution, claims must be
given their broadest reasonable interpretation in light of the Specification.
See Phillips v. AWH Corp., 415 F.3d 1303, 1314 (Fed. Cir. 2005). Although
the Specification categorizes "[p ]ermanent stents" as stents that "are retained
in place and incorporated into the vessel wall," and "[ r ]emovable stents" as
stents that "are removed from the body vessel when the stent is no longer
needed" (Spec. i-f 5), this passage does not provide evidence that a removable
stent is one that must be intended to be removed at the time of placement nor
provide evidence as to when a stent is no longer needed and would be
removed. Appellant has not persuasively shown that the Specification
requires the more narrow interpretation upon which its position is based.
Additionally, Appellant has not persuasively explained how the Examiner's
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Application 13/874,693
claim interpretation is overly broad and unreasonable in light of the
Specification. We agree with the Examiner's finding that Chobotov's stent
is capable of being removed, and thus, meets the claim under the broadest
reasonable interpretation in light of the Specification. Ans. 5.
Appellant further argues that Chobotov "teaches away from using
barbs that are attached by methods other than integral formation because
higher strength and better fatigue resistance are obtained" with integral
barbs. Appeal Br. 12. We are not persuaded that Chobotov's desire for
strength and fatigue resistance teaches away from non-integral barbs because
Appellants have not identified where Chobotov actually criticizes or
discourages non-integral barbs. See DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) ("A reference
does not teach away, however, if it merely expresses a general preference for
an alternative invention but does not 'criticize, discredit, or otherwise
discourage' investigation into the invention claimed." (quoting In re Fulton,
391 F.3d 1195, 1201 (Fed. Cir. 2004)). Indeed, as recognized by the
Examiner, Chobotov explicitly recognizes "other means of attachment."
Final Act. 5 (citing Chobotov, 11:37--44) ("Note that although the various
barbs ... discussed herein may be attached to or fixed on the stent struts
... , we have found it useful that ... they be integrally formed as part of the
stent struts.").
Appellant additionally argues that "[ o ]ne of ordinary skill in the art
would not see the benefit of modifying the Chobotov stent-graft with
bioresorbable barbs as this would not be a durable component and would
reduce the strength and fatigue resistance as stated by Chobotov" such that
the Examiner is relying on "impermissible hindsight reconstruction."
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Application 13/874,693
Appeal Br. 13; see also id. at 11. Appellant's argument suggests that the
proposed modification involves tradeoffs; however, such considerations do
not necessarily prevent the proposed combination. See Medichem, S.A. v.
Rolabo, S. L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine"); Winner Int 'l Royalty Corp.
v. Wang, 202 F.3d 1340, 1349 n. 8 (Fed. Cir. 2000) ("The fact that the
motivating benefit comes at the expense of another benefit, however, should
not nullify its use as a basis to modify the disclosure of one reference with
the teachings of another. Instead, the benefits, both lost and gained, should
be weighed against one another."). The Examiner has identified an
advantage to making the barb bioresorbable-i.e., facilitating removal of the
stent. We note that Kleshinski explicitly teaches the desirability of the
ability to reposition stents. See, e.g., Kleshinski, 1: 14--16, 54--60. That this
advantage comes at the purported expense of durability of the barbs as
argued by Appellant does not necessarily mean that the modification would
not have been obvious.
Moreover, Kleshinski discloses barbs alternatively comprising
"Nitinol in either its memory form or superelastic form" or "other material
such as biologically resorbable polymers." Kleshinski, 4:20-25. This
disclosure suggests that either material is sufficiently durable for "anchoring
the stent to the vessel in which it is implanted." Id. In light of the known
alternatives in the art, we conclude that it would have been obvious to one
having ordinary skill in the art at the time of Appellant's invention as a
matter of simple substitution to replace Chobotov's stent comprising struts
and barbs made of "a shape memory alloy having superelastic properties
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Application 13/874,693
such as NiTi" (Chobotov, 10:31-35) with the known alternative of
biologically resorbable polymers of Kleshinski in order to achieve the same
function of aiding in anchoring the stent to the vessel and to achieve a
predictable result. See KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398, 416
(2007) ("when [an application] claims a structure already known in the prior
art that is altered by the mere substitution of one element for another known
in the field, the combination must do more than yield a predictable result")
(citing United States v. Adams, 383 U.S. 39, 50-51 (1966)).
As such, we agree with the Examiner's ultimate conclusion of
obviousness of the subject matter of claim 1 based on the combined
teachings of Chobotov and Kleshinski, although we consider additional
reasoning beyond that articulated by the Examiner. For these reasons, we
sustain the rejection of claim 1 under 35 U.S.C. § 103(a), and claims 3, 4, 6-
9, 11-14, 16-18, and 20 which fall with claim 1, but designate our
affirmance as a NEW GROUND OF REJECTION, to afford Appellant an
opportunity to address the rejection as articulated in this Decision.
Rejection II
Appellant's arguments in support of the patentability of claims 5, 10,
15, and 19 relate to the perceived deficiencies in the combined teachings of
Chobotov and Kleshinski. Appeal Br. 15. Because we have found no such
deficiencies in the combination of Chobotov and Kleshinski, we are not
persuaded of error in the Examiner's rejection of claims 5, 10, 15, and 19.
Accordingly, we sustain the rejection of claims 5, 10, 15, and 19 under 35
U.S.C. § 103(a) as unpatentable over Chobotov, Kleshinski, and Chouinard.
By virtue of claims 5, 10, 15, and 19 encompassing the subject matter of the
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Application 13/874,693
claims from which they depend, we likewise designate our affirmance of
claims 5, 10, 15, and 19 as a new ground of rejection under 37 C.F.R.
§ 41.50(b ).
Rejection III
Appellant does not present any substantive arguments contesting the
Examiner's rejection of claims 1 and 3-20 on the ground of nonstatutory
double patenting. Consequently, Appellant has waived any argument of
error, and we summarily sustain the rejection of claims 1 and 3-20 on the
ground ofnonstatutory double patenting. See, e.g., In re Berger, 279 F.3d
975, 984--85 (Fed. Cir. 2002) (holding that the Board did not err in
sustaining a rejection under 35 U.S.C. § 112, second paragraph, when the
applicant failed to contest the rejection on appeal).
DECISION
The Examiner's decision to reject claims 1 and 3-20 on the ground of
nonstatutory double patenting as being unpatentable over claims 1-12 of
Sherry is summarily affirmed.
The Examiner's decision to reject claims 1 and 3-20 under 35 U.S.C.
§ 103(a) is affirmed, and we designate the affirmance as containing NEW
GROUNDS OF REJECTION pursuant to our authority under 37 C.F.R.
§ 41.50(b). Section 41.50(b) provides "[a] new ground of rejection pursuant
to this paragraph shall not be considered final for judicial review." Section
41.50(b) also provides:
When the Board enters such a non-final decision, the appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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Application 13/874,693
of rejection to avoid termination of the appeal as to the rejected
claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating to
the claims so rejected, or both, and have the matter reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv).
AFFIRMED; 37 C.F.R. § 41.50(b)
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