Ex Parte Smith

Board of Patent Appeals and Interferences

May 18, 2011

10630562 (B.P.A.I. May. 18, 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.
10/630,562 07/30/2003 Scott Smith S63.2N-14369-US03 8643
490 7590 05/18/2011
VIDAS, ARRETT & STEINKRAUS, P.A.
SUITE 400, 6640 SHADY OAK ROAD
EDEN PRAIRIE, MN 55344
EXAMINER
GANESAN, SUBA
ART UNIT PAPER NUMBER
3774
MAIL DATE DELIVERY MODE
05/18/2011 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 SCOTT SMITH
____________________

Appeal 2009-012260
Application 10/630,562
Technology Center 3700
____________________

Before: JENNIFER D. BAHR, STEFAN STAICOVICI, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012260
Application 10/630,562
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STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134 from the Examiner’s
rejection of claims 1, 3, 6-8, 12 and 13. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.

The claims are directed to a helically formed stent/graft assembly.
Claim 1, reproduced below, is illustrative of the claimed subject matter:
1. A stent/graft composite device formed from a flat
preformed planar strip and stent assembly comprising:
an elongate preformed non-textile planar strip of
polymeric graft material having a first exterior surface and a
second opposed luminal surface; and
a planar stent attached onto one of said opposed flat
exterior or luminal surfaces of said strip to form said flat strip
assembly, said strip assembly being helically wound into a
continuous tubular structure.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Lau
Leopold
US 6,165,210
US 6,352,561 B1
Dec. 26, 2000
Mar. 5, 2002

REJECTION
Claims 1, 3, 6-8, 12 and 13 stand rejected under 35 U.S.C § 103(a) as
being unpatentable over Leopold, and Lau. Ans. 3.

Appeal 2009-012260
Application 10/630,562
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OPINION
Appellant argues claims 1, 3, 6-8, 12 and 13 as a group. App. Br. 4.
We select claim 1 as the representative claim, and claims 3, 6-8, 12 and 13
will stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appellant argues that neither Leopold nor Lau discloses a “flat strip
assembly of an elongate preformed non-textile planar strip of polymeric
graft material and a planar stent.” App. Br. 6. However, claim 1 is directed
to “[a] stent/graft composite device formed from a flat preformed planar
strip and stent assembly.” The claim is not directed to the intermediate
product from which the claimed device is formed, i.e., a flat preformed
planar strip and stent assembly. In this case, we agree with the Examiner
that Leopold discloses a planar strip 128 and Lau discloses a planar stent
126. Ans. 3. Furthermore, we note that it is impossible for the strip
assembly of the claimed device to be both “planar” and “helically wound” at
the same time. See Spec. 10, para. [0058] (expressly defining “planar” as a
structure not defined by a vector to any large extent in a third dimension).
Thus, we agree with the Examiner’s interpretation that the limitations of
claim 1 relating to the planar nature of the strip and stent assembly are
product-by-process limitations. Accordingly, we agree with the Examiner
that helically winding a planar stent and strip that are already attached does
not result in a structural difference in the claimed apparatus as compared to a
device produced according to the teachings of Leopold and Lau wherein a
stent 126 is helically wound prior to attaching it to tape 128, read as the
claimed “strip of polymeric graft material.” Ans. 4. See also, Leopold, col. 9,
ll. 25-27, col. 10, ll. 62-65, col. 11, ll. 54-57, fig. 3; Lau, col. 13, ll. 18-23,
col. 14, ll. 43-52, fig. 10.
Appeal 2009-012260
Application 10/630,562
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“The patentability of a product does not depend on its method of
production.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citing In re
Pilkington, 411 F.2d 1345, 1348 (CCPA 1969)). “If the product in a product-
by-process claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior product was made by a
different process.” In re Thorpe, 777 F.2d at 697 (citing In re Marosi, 710
F.2d 799, 803 (Fed. Cir. 1983); Johnson & Johnson v. W.L. Gore, 436
F.Supp. 704, 726 (D. Del. 1977); and In re Fessmann, 489 F.2d 742 (CCPA
1974)). As the CCPA stated in In re Brown, 459 F.2d 531, 535 (CCPA
1972) (emphasis omitted):
[T]he lack of physical description in a product-by-process claim
makes determination of the patentability of the claim more
difficult, since in spite of the fact that the claim may recite only
process limitations, it is the patentability of the product claimed
and not of the recited process steps which must be established.
We are therefore of the opinion that when the prior art discloses
a product which reasonably appears to be either identical with
or only slightly different than a product claimed in a product-
by-process claim, a rejection based alternatively on either
section 102 or section 103 of the statute is eminently fair and
acceptable. As a practical matter, the Patent Office is not
equipped to manufacture products by the myriad of processes
put before it and then obtain prior art products and make
physical comparisons therewith.
In effect, the USPTO bears a lesser burden of proof in making out a prima
facie case of obviousness in a product-by-process situation because of its
peculiar nature. Fessman, 489 F.2d at 744.
Appellant contends that:
as the inventive stent/graft composite device is formed from a
flat planar strip assembly of planar graft material and a planar
stent, the resulting device is structurally improved over the
prior art because the assembly components, i.e., planar graft
Appeal 2009-012260
Application 10/630,562
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and planar stent, may be more accurately positioned with
respect to one and the other and better secured to each other to
provide a stent/graft composite device with improved integrity,
as described in the Specification at paragraph [00554] (sic
[0054]).
App. Br. 7-8. Appellant has not provided sufficient evidence or technical
reasoning to establish that producing a stent by the process described by
claim 1, helically winding a planar stent and strip that are already attached,
would result in a structure wherein the stent and graft are more accurately
positioned or exhibit improved integrity as compared to a stent produced
according to the teachings of Leopold and Lau.
Regarding the Examiner’s proposed combination with Lau’s planar
stent, Appellant contends that the Examiner failed to provide a sufficient
reason for the proposed modification and improperly resorted to hindsight.
Reply Br. 2-3. First, as noted above, the limitation requiring a “planar stent”
pertains to an an intermediate product from which the claimed device is
formed and does not result in a structural difference in the claimed apparatus
itself. Second, it is clear from figures 1-15 of the Specification and the
corresponding description that Appellant did not intend for the term “planar”
to exclude a structure merely because it was formed from wire having a
round cross section such a Leopold’s. See e.g., Spec. p. 9, para. [0056], p.
13, para. [0071]; See also App. Br. 3 (citing wire 152 as the claimed “planar
stent”). Third, even if the claim were construed to require it, we agree with
the Examiner that the structure depicted in Figures 6-10 of Lau and cited by
the Examiner is also reasonably read as a “planar stent” made from planar
wire or ribbon. Ans. 3. See also, Spec. 14, para. [0075]; figs. 16-18. The
Examiner articulates, and Lau discloses, a sufficient reason for the proposed
Appeal 2009-012260
Application 10/630,562
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substitution. Appellant has not established the Examiner relied on
knowledge gleaned only from Appellant’s disclosure.
Lau suggests that using the structure depicted in Figures 6-10 as an
alternative to the wire depicted in Figures 1-5 would enable the stent to be
formed out of flat sheet. Col. 13, ll. 19-20. Thus, the Examiner’s proposed
modification amounts to the simple substitution of known elements with
predictable results and therefore would have been obvious to one having
ordinary skill in the art.
The reasoning articulated by the Examiner for the proposed
modification need not be derived from the prior art itself. See In re Jacoby,
309 F.2d 513, 516 (CCPA 1962) (an artisan must be presumed to know
something about the art apart from what the references disclose). The
Examiner concluded that employing the structure depicted in figures 6-10 of
Lau would change the surface area of the stent and graft exposed to the
adhesive surface of Leopold’s tape. Ans. 3. We are mindful of the fact
that, as noted by Appellant, Leopold expresses the desirability of increasing
the potential bonding surface area between the tape member 128 and graft
124. Reply Br. 2-3; Leopold col. 9, ll. 25-46. However, we disagree that this
would lead the skilled artisan away from modifying Leopold to incorporate
the structure depicted in figures 6-10 of Lau. Adjusting the adhesion
strength between the tape and stent or tape and graft is a simple detail of
construction that could be left to the skilled artisan to decide. “[A] person of
ordinary skill is also a person of ordinary creativity, not an automaton.” KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).

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DECISION
For the above reasons, the Examiner’s rejection of claims 1, 3, 6-8, 12
and 13 is 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) (2009).

AFFIRMED

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