10528044 (B.P.A.I. May. 22, 2012)

Ex Parte Besselink

Board of Patent Appeals and InterferencesMay 22, 2012

10528044 (B.P.A.I. May. 22, 2012)

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. 10/528,044 03/16/2005 Petrus Besselink BES 0009 PA 2774 23368 7590 05/22/2012 DINSMORE & SHOHL LLP FIFTH THIRD CENTER, ONE SOUTH MAIN STREET SUITE 1300 DAYTON, OH 45402-2023 EXAMINER HOUSTON, ELIZABETH ART UNIT PAPER NUMBER 3731 MAIL DATE DELIVERY MODE 05/22/2012 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 PETRUS BESSELINK ____________ Appeal 2011-003593 Application 10/528,044 Technology Center 3700 ____________ Before DONALD E. ADAMS, DEMETRA J. MILLS, and LORA M. GREEN, Administrative Patent Judges. ADAMS, Administrative Patent Judge. DECISION ON APPEAL This appeal under 35 U.S.C. § 134 involves claims 1-6, 8-10, 13, 15- 21, 41, 42, 48, 51, 52, and 55-59 (App. Br. 2). We have jurisdiction under 35 U.S.C. § 6(b). STATEMENT OF THE CASE The claims are directed to a medical device configured to be disposed within a body lumen. Claims 1 and 6 are representative and are reproduced in the “Claims Appendix” of Appellant‟s Brief (App. Br. 9). Appeal 2011-003593 Application 10/528,044 2 Claims 1-5, 8, 9, 13, 15, 18-21, 41, 42, 48, 51, 52, and 55-59 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsugita 1 and Gianotti. 2 Claims 6, 10, 16, and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsugita, Gianotti, and Daniel. 3 We affirm. The combination of Tsugita and Gianotti: ISSUE Does the preponderance of evidence on this record support a conclusion that Gianotti suggests a fiber-reinforced membrane? FACTUAL FINDINGS (FF) FF 1. “Tsugita discloses a medical device configured to be disposed within a body lumen, said device comprising a mesh of braided fibers” (Ans. 3). FF 2. “Tsugita does not disclose . . . reinforcement fibers coupled to a membrane to form a composite structure” (id.). FF 3. “Gianotti discloses a mesh of braided fibers similar to that of Tsugita, where each fiber is a composite structure . . . formed from reinforcement fibers . . . coupled to a” shell (id.). FF 4. Examiner finds that Gianotti‟s shell reads on the membrane requirement of Appellant‟s claims (see Ans. 7 (Gianotti‟s “outer layer „membrane‟ can be porous for taking up liquids (C4:L50-65) which further lends itself to being defined as a membrane”)). 1 Tsugita et al., US 6,371,971 B1, issued April 16, 2002. 2 Gianotti, US 5,836,962, issued November 17, 1998. 3 Daniel et al., US 5,814,064, issued September 29, 1998. Appeal 2011-003593 Application 10/528,044 3 FF 5. Examiner finds that Gianotti‟s “outer layer is „pliable‟ in that the composite filaments are used to construct an endoprosthesis for use in the vessels which would necessarily have some flexibility for delivery through the vessels” (Ans. 7); see also id. (Gianotti‟s “outer layer is „relatively thin‟ in that Gianotti discloses that the thickness of both the fibers and the outer layer are adjustable based on the user‟s needs (C6:L46-63)). FF 6. Gianotti suggests “advantages of using a composite fiber to increase biocompatibility without compromising necessary stiffness . . . as well as providing the ability to incorporate contrast medium for better positioning the device . . . and the ability to provide drug delivery” (id. at 3-4). ANALYSIS Based on the combination of Tsugita and Gianotti, Examiner concludes that, at the time Appellant‟s claimed invention was made, it would have been prima facie obvious to a person of ordinary skill in this art “to incorporate [Gianotti‟s] composite fibers in place of the fibers used in the filter of Tsugita to achieve the advantages taught by Gianotti” (Ans. 4). In response, Appellant contends that “[t]here is nothing in the elongate composite construction of Gianotti that even remotely suggests a fiber-reinforced membrane as properly understood by recourse to . . . [Appellant‟s] original specification” and the commonly understood meaning of the term “membrane” (App. Br. 5-6; see also Reply Br. 1 (“Examiner cannot ignore the meaning of the term „membrane‟ in the claims on appeal”)). We are not persuaded. Appellant‟s claim 1 requires, inter alia, (a) a membrane and (b) reinforcement fibers coupled to the membrane to form a composite structure. Gianotti suggests reinforcement fibers coupled to a shell (FF 3). Therefore, Appeal 2011-003593 Application 10/528,044 4 the issue distills down to whether Gianotti‟s shell falls within the scope of Appellant‟s membrane. In this regard, we recognize Appellant‟s reference to “Webster’s Ninth New Collegiate Dictionary[, which] defines a membrane as „a thin soft pliable . . . layer‟” (App. Br. 6; Reply Br. 3; see also App. Br. 5-6 (“This notion of a thin, flexible, relatively non-loadbearing sheet-like membrane being coupled to a reinforcing fiber to produce an intraluminal medical device is further discussed in numerous locations within the original specification”); Reply Br. 1-2). We recognize Appellant‟s contention that “Applicant clearly intended the composite structure recited in the independent claims to possess a relatively thin membrane coupled to reinforcement fibers rather than any combination of the purely fibrous mesh of Tsugita or the concentric reinforced fiber construction of Gianotti” (App. Br. 6). 4 While this may have been Appellant‟s intention, Appellant failed to explain why a person of ordinary skill in this art would not have reasonably understood that Gianotti‟s shell falls within the scope of the term “membrane” as that term is read in light of Appellant‟s Specification and commonly understood by those of ordinary skill in this art (e.g., a thin, flexible, relatively non- loadbearing layer) (Cf. FF 3-5). CONCLUSION OF LAW The preponderance of evidence on this record supports the conclusion that Gianotti suggests a fiber-reinforced membrane. The rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsugita 4 Because Gianotti‟s figures do not include dimensions and terms such as “thin” or “thick” are relative, we are not persuaded by Appellant‟s contention that Gianotti‟s figures illustrate “a relatively thick, robust cylindrical structure” (Reply Br. 3). Appeal 2011-003593 Application 10/528,044 5 and Gianotti is affirmed. Because they are not separately argued claims 2-5, 8, 9, 13, 15, 18-21, 41, 42, 48, 51, 52, and 55-59 fall together with claim 1. 37 C.F.R. § 41.37(c)(1)(vii). The combination of Tsugita, Gianotti, and Daniel: ISSUE Does the preponderance of evidence on this record support a conclusion of obviousness? ANALYSIS Having found no error in the combination of Tsugita and Gianotti, we are not persuaded by Appellant‟s contention that Daniel fails to make up for the deficiencies in the combination of Tsugita and Gianotti (App. Br. 7). CONCLUSION OF LAW The preponderance of evidence on this record supports a conclusion of obviousness. The rejection of claim 6 under 35 U.S.C. § 103(a) as unpatentable over the combination of Tsugita, Gianotti, and Daniel is affirmed. Because they are not separately argued claims 10, 16, and 17 fall together with claim 6. 37 C.F.R. § 41.37(c)(1)(vii). TIME PERIOD FOR RESPONSE 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 alw