Ex Parte Xu

Board of Patent Appeals and Interferences

Mar 30, 2009

10237517 (B.P.A.I. Mar. 30, 2009)

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

Ex parte YIXIN XU
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Appeal 2008-6114
Application 10/237,517
Technology Center 3700
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Decided: March 30, 20091
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Before DEMETRA J. MILLS, LORA M. GREEN, and
JEFFREY N. FREDMAN, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2008-6114
Application 10/237,517

STATEMENT OF CASE
This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
The following claim(s) are representative.
1. A stent comprising a tubular member comprising a molybdenum/rhenium
alloy, wherein the molybdenum/rhenium alloy includes between 10% and
70% molybdenum by weight and between 35% and 55% rhenium by weight.

6. The stent of claim 1, wherein the molybdenum/rhenium alloy includes
between 45% and 65% molybdenum by weight.

24. The stent of claim 23, wherein the molybdenum/rhenium alloy includes
between 45% and 65% molybdenum by weight.

25. The stent of claim 22, wherein the alloy consists essentially of
molybdenum and rhenium.

Cited References
Felix US 5,372,661 Dec. 13, 1994
Yan US 5,843,172 Dec. 1, 1998
Dutta US 6,702,849 B1 Mar. 9, 2004

Rhenium Alloys Inc., http://www.rhenium.com/

Grounds of Rejection
1. Claims 1, 6, 10-12, 14-18, 20, and 22-30 stand rejected under
35 U.S.C. § 103(a) over Dutta and Rhenium Alloys.
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2. Claims 1, 10-12, 16-18, 20, 22, 23 and 26-30 stand rejected under
35 U.S.C. § 103(a) over Yan in view of Felix.2

ISSUE
The issue is: Has the Examiner engaged in hindsight reconstruction to
arrive at the claimed invention?

FINDINGS OF FACT
The Examiner finds that:
1. The Examiner finds that “Dutta et al. disclose a stent being made from
molybdenum/rhenium alloy.” (Ans. 4 see also Dutta, col. 3, ll. 43-46.)
2. “Although, Dutta et al. fail to disclose the percentage as claimed of the
rhenium and molybdenum, Rhenium Alloys . . . disclose molybdenum-
rhenium alloy having percentage of the rhenium and molybdenum as
claimed which has a high stress-rupture strength.” (Ans. 4.)
Rhenium Alloys disclose an alloy of 50% Mo and 50% Re.
3. The Examiner therefore concludes that “it would have been obvious to
one having ordinary skill in the art at the time the invention was made to use
the molybdenum-rhenium alloy having the percentage as disclosed by
Rhenium Alloys, . . . to make Dutta’s . . . stent in order to provide a better
strength for the stent.” (Ans. 4.)
4. The Examiner finds that “Yan disclose a stent being made from
molybdenum/rhenium alloy.” (Ans. 4; see also Yan, col. 4, ll. 32-40.)

2 The Examiner withdraws the rejection of claims 6, 24 and 25 over Yan in
view of Felix. (Ans. 9.)
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5. “Although Yan fails to disclose the percentage of molybdenum/rhenium
alloy as claimed, Felix et al. disclose the molybdenum/rhenium alloy having
the percentage as claimed having an improved erosion, ductility, strength.”
(Ans. 4.)
6. Felix discloses in claim 1 an alloy of 10-45% rhenium, 10-20% tungsten,
and the remainder molybdenum. (Felix, col. 8, ll. 57-64.) Thus the alloy of
Felix may contain 45% rhenium, 10% of tungsten and 45% molybdenum.
7. The Examiner thus concludes that “it would have been obvious to one
having ordinary skill in the art at the time the invention was made to use the
molybdenum- rhenium alloy having the percentage as disclosed by Felix et
al. to make Yan’s stent in order to provide a better ductility and strength for
the stent.” (Ans. 4-5.)

PRINCIPLES OF LAW
“In rejecting claims under 35 U.S.C. § 103, the examiner bears the
initial burden of presenting a prima facie case of obviousness. “In re
Rijckaert, 9 F.3d 1531, 1532 (Fed. Cir. 1993) (citations omitted). Only if
that burden is met, does the burden of coming forward with evidence or
argument shift to the Applicant. In order to determine whether a prima facie
case of obviousness has been established, we considered the factors set forth
in Graham v. John Deere Co., 383 U.S. 1, 17 (1996); (1) the scope and
content of the prior art; (2) the differences between the prior art and the
claims at issue; (3) the level of ordinary skill in the relevant art; and (4)
objective evidence of nonobviousness, if present.
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“Under 35 U.S.C. § 103, a reference must be considered not only for
what it expressly teaches, but also for what it fairly suggests. In re Lamberti,
545 F.2d 747, 750 (Cust. & Pat. App. 1976); In re Simon, 461 F.2d 1387,
1390 (CCPA 1972). “[I]n a section 103 inquiry, ‘the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’” Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976).)
“Any judgment on obviousness is in a sense necessarily a
reconstruction based upon hindsight reasoning, but so long as it takes into
account only knowledge which was within the level of ordinary skill at the
time the claimed invention was made and does not include knowledge
gleaned only from applicant’s disclosure, such a reconstruction is proper.” In
re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971).

ANALYSIS
1. Claims 1, 6, 10-12, 14-18, 20, 22-30 stand rejected under 35
U.S.C. 103(a) over Dutta and Rhenium Alloys. We select claims 1, 6 and 24
as representative of this rejection as these claims are separately argued by
Appellant in the Brief.
2. Claims 1, 6, 10-12, 16-18, 20, 22-30 stand rejected under 35
U.S.C. 103(a) over Yan in view of Felix. We select claim 1 as
representative.

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Rejection over Dutta and Rhenium Alloys
Appellant argues that Examiner made an improper hindsight
reconstruction of the claimed invention from Dutta et al in view of Rhenium
Alloys. (App. Br. 9.) Appellant argues that
the primary references (Dutta and Yan) provide lists of
materials that potentially can be used in their stents. The lists
include molybdenum/rhenium alloy. But neither reference
discloses any specific molybdenum/rhenium alloy, or suggest
that an alloy including, for example, between 35% and 55%
rhenium would provide a successful stent generally, let alone a
stent with the specific features sought by Dutta and Yan.

(App. Br. 9.)

The Examiner argues that he has:
taken into account only knowledge which was within the level of
ordinary skill at the time the claimed invention was made, and
does not include knowledge gleaned only from the Applicant’s
disclosure, such a reconstruction is proper. . . . The main
reference, Dutta et al. discloses a stent being made from metallic
materials to provide the strength require[] to function as a stent
(col. 5, lines 7-10) and the metallic material suitable for forming
the stent including molybdenum-rhenium alloy (col. 34-38).
Although, Dutta et al. reference does not disclose the percentage
as claimed of the rhenium and molybdenum, attention is directed
to the teaching reference, Rhenium Alloys . . . which teaches that
molybdenum-rhenium alloy having percentage of the rhenium
and molybdenum as claimed has a high stress-rupture strength.
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to use the high stress-rupture
strength molybdenum-rhenium alloy as disclosed by Rhenium
Alloys . . . for making Dutta et al.’s stent in order to enhance the
strength of the stent. Thus the strength as disclosed in the
teaching reference is the motivation.

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(Ans. 5-6.)

We are not convinced by Appellant’s arguments. Dutta discloses a
stent that is composed of “a metal such as stainless steel, tantalum, a
composite of tantalum and silicon carbide, gold, or can be formed of a
polymer, or of a composite.” (See col. 3, lines 40-42.) Dutta also teaches
(col. 3, lines 43-46): “Other metals that may also be suitable for forming the
stent include nickel-titanium alloy, platinum-iridium alloy, molybdenum-
rhenium alloy, gold, magnesium, and combinations thereof.” Thus, while
Appellant argues that Dutta does not disclose any specific
molybdenum/rhenium alloy, Dutta specifically teaches that various metals
and metal alloys, including molybdenum/rhenium, “may also be suitable for
forming the stent.” (Col. 3, lines 43-46; FF 1.)
Appellant argues that
the fact that a particular alloy is prior art does not teach
anything about what was known concerning the properties and
potential uses of the alloy in the prior art. That information is
available in the Rhenium Alloys articles that were provided to
applicant by Rhenium Alloys. And the Rhenium Alloys articles
AP and AQ touted such alloys for high temperature uses such
as in space ships, not for use in stents. The articles suggest
nothing about the suitability of the molybdenum/rhenium alloys
for use in stents.

(Reply Br. 10.)

Such suitability for the use of molybdenum/rhenium alloy in stents,
however, is disclosed in Dutta. (FF 1.) Dutta discloses molybdenum/-
rhenium alloy is suitable for use to form stent (col. 3, ll. 34- 38) and nothing
in Dutta teaches away from using the molybdenum/rhenium alloy as
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disclosed by Rhenium Alloys for forming stents. Therefore, we agree with
the Examiner that it is a reasonable expectation that molybdenum/rhenium
alloys known in the art as disclosed in Rhenium Alloys would function in a
stent. (Ans. 6-7.) Appellant has not presented evidence to the contrary.

Claims 6 and 24
Appellant argues that claim 6 is narrower than claim 1 and that Dutta
and Rhenium alloys does not disclose this narrower range of molybdenum.
(Br. 13.) Claim 24 is of similar scope to claim 6.
We are not persuaded by Appellant’s argument. Again the Examiner
argues that the suitability for the use of molybdenum/rhenium alloy in stents,
however, is disclosed in Dutta. (FF 1.) Dutta discloses molybdenum/-
rhenium alloy is suitable for use to form stent (col. 3, ll. 34- 46) and nothing
in Dutta teaches away from using the molybdenum/rhenium alloy as
disclosed by Rhenium Alloys (FF 2) for forming stents. Therefore, we agree
with the Examiner that it is a reasonable expectation that
molybdenum/rhenium alloys known in the art as disclosed in Rhenium
Alloys would function in a stent. (Ans. 7.)
The rejection over Dutta and Rhenium alloys is affirmed.

Rejection of Yan in view of Felix
Appellant admits that Yan lists various metals and alloys that can be
used in his stent, including molybdenum/rhenium alloy (col. 4, lines 32-37).
(App. Br. 13.) Appellant further notes that for each of the Yan
embodiments, the metal stent material member can be a suitable metal such
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as stainless steel, tantalum, nickel-titanium alloy, platinum-iridium alloy,
molybdenum-rhenium alloy, gold, magnesium, combinations thereof,
although other similar materials also may be suitable. (App. Br. 13.)
Appellant contends however, that, “Yan does not disclose any specific
example of a molybdenum/rhenium alloy or a stent made from a
molybdenum/rhenium alloy.” (App. Br. 13.) Appellant argues that Felix
does not relate to stents or medical devices generally. (App. Br. 14.)
However, Appellant again admits that Felix states that his alloys can include
from about 10% to about 45% rhenium by weight (see claim 1 of Felix), but
argue that the preferred embodiments and all the examples include between
10% and 15% rhenium. See col. 1, lines 49-57, col. 2, lines 47-56, and col. 5
lines 46-55 (examples). (App. Br. 14.) Appellant argues that Felix does not
describe a weight range for the amount of molybdenum in his alloy. But all
of the examples of alloys provided by Felix include over 75% molybdenum
by weight. See col. 5, lines 46-55. (App. Br. 15.)
We are not persuaded by Appellant’s arguments. Felix discloses in
claim 1 an alloy of 10-45% rhenium, 10-20% tungsten, and the remainder
molybdenum, meeting the claim limitations. (Col. 8, ll. 57-64; FF 6.) Thus
the alloy of Felix may contain 45% rhenium, 10% of tungsten and 45%
molybdenum. Moreover, a finding that the prior art as a whole suggests the
desirability of a particular combination need not be supported by a finding
that the prior art suggests that the combination claimed by the patent
applicant is the preferred, or most desirable, combination. In re Fulton, 391
F.3d 1195, 1200 (Fed. Cir. 2004). “[I]n a section 103 inquiry, ‘the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
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disclosures of the prior art, including unpreferred embodiments, must be
considered.’” Merck & Co. Inc. v. Biocraft Laboratories Inc., 874 F.2d 804,
807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA
1976).
We find that the cited art in combination, when read as a whole
(particularly claim 1 of Felix), suggests the use of a molybdenum/rhenium
alloy as claimed in a stent.
We affirm the rejections of the Examiner.

SUMMARY
The obviousness rejections 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).

AFFIRMED

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