Ex Parte Udipi et alDownload PDFPatent Trial and Appeal BoardFeb 28, 201310831091 (P.T.A.B. Feb. 28, 2013) Copy Citation 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. 10/831,091 04/23/2004 Kishore Udipi P1367 US (2650/65) 9310 7590 02/28/2013 MEDTRONIC VASCULAR , INC 3376 Unocal Place Santa Rosa, CA 95403 EXAMINER SEVERSON, RYAN J ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 02/28/2013 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 PATENT TRIAL AND APPEAL BOARD ____________ Ex parte KISHORE UDIPI and PEIWEN CHENG ____________ Appeal 2010-004980 Application 10/831,091 Technology Center 3700 ____________ Before STEVEN D.A. McCARTHY, EDWARD A. BROWN, and MICHAEL C. ASTORINO, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision finally rejecting claims 1-21 and 28-31 under 35 U.S.C. § 103(a) as unpatentable over Caprio (US 2001/0007081 A1, publ. Jul. 5, 2001) and Furst (US 2002/0099438 A1, publ. Jul. 25, 2002). Claims 22-27 are withdrawn. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Appeal 2010-004980 Application 10/831,091 2 CLAIMED SUBJECT MATTER Claims 1 and 18 are the independent claims on appeal. Claim 1, reproduced below, with emphasis added, is illustrative of the subject matter on appeal. 1. A system for treating a vascular condition, comprising: a catheter; a stent operably coupled to the catheter, the stent including a stent framework; and a drug-polymer coating operably disposed on the stent framework, the drug-polymer coating having an inner coating surface and an outer coating surface, the drug-polymer coating including polymer chains and at least one plasticizer dispersed within the drug-polymer coating, wherein a concentration of the at least one plasticizer varies between the inner coating surface and the outer coating surface. Claim 18 recites “[a] drug-polymer coated stent” including “a plasticized drug-polymer coating on the stent framework, the plasticized drug-polymer coating having an inner coating surface and an outer coating surface, the plasticized drug-polymer coating including polymer chains and at least one plasticizer dispersed within the plasticized drug-polymer coating, wherein a concentration of the at least one plasticizer varies between the inner coating surface and the outer coating surface.” OPINION The Examiner finds Caprio discloses a stent 18 coupled to a catheter but does not “disclose a drug-polymer coating on the stent having a variable plasticizer concentration.” Ans. 3. The Examiner also finds that Furst Appeal 2010-004980 Application 10/831,091 3 discloses “a drug-polymer coating including a plasticizer of polyethylene glycol (see paragraph 36) that can have variable concentrations throughout the thickness (see paragraph 32) of the coating to control the rate at which the drug is released upon implantation of the stent.” Id. (emphasis added). The Examiner concludes that “[i]t would have been obvious to one of ordinary skill in the art at the time the invention was made to include the coating of Furst on the stent of Caprio . . . to allow drugs to be delivered to the target site and to be able to control the rate at which those drugs are released.” Id. The Appellants correctly contend that Furst does not disclose a variable concentration plasticizer. See App. Br. 12. The Appellants support this contention by asserting that “Furst teaches that the concentration of the biological agents, not a plasticizer, in each coating that is coated onto the stent or implant can be the same or different.” Reply Br. 6 (citing to Furst para. [0032]). Indeed, Furst describes “the concentration and/or type of biological agents in each coating that is coated onto the stent or implant can be the same or different.” Furst, para. [0032], ll. 13-16. The Examiner responds that paragraph [0032] of Furst “teaches the variable concentration limitations” (Ans. 5), but does not identify any disclosure from Furst’s paragraph [0032] or any portion of Furst’s patent that suggests varying the concentration of a plasticizer or polyethylene glycol. Put simply, Furst’s paragraph [0032] discloses varying the concentration of a biological agent and not of a plasticizer or of polyethylene glycol. Additionally, claims 28-31 depend from claim 1 and include further limitations directed to concentrations of the at least one plasticizer relative to the inner and/or outer coating surfaces of the drug-polymer coating. See Appeal 2010-004980 Application 10/831,091 4 App. Br., Claims Appendix. The Examiner determines that “since Furst teaches that the concentrations can vary as desired (as in paragraph 32), one of ordinary skill in the art would have found it obvious to vary the concentration in the orientations claimed depending on the desired drug release rate.” Ans. 4; see Ans. 6. The Examiner’s finding that “Furst teaches that the concentrations can vary as desired” is not adequately supported for a plasticizer or polyethylene glycol. Supra. As such, the Examiner’s conclusion of obviousness for claims 1, 18, and 28-31 is not adequately supported. Thus, the rejection of claims 1-21 and 28-31 as unpatentable over Caprio and Furst is not sustained. DECISION We REVERSE the rejection of claims 1-21 and 28-31. REVERSED Klh Copy with citationCopy as parenthetical citation