Ex Parte Hornig

Board of Patent Appeals and Interferences

May 17, 2012

11441318 (B.P.A.I. May. 17, 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.
11/441,318 05/25/2006 Mathias Hornig 2004P20514US 7958
22116 7590 05/17/2012
SIEMENS CORPORATION
INTELLECTUAL PROPERTY DEPARTMENT
170 WOOD AVENUE SOUTH
ISELIN, NJ 08830
EXAMINER
EASTWOOD, DAVID C
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
05/17/2012 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 MATHIAS HORNIG
__________

Appeal 2010-010996
Application 11/441,318
Technology Center 3700
__________

Before TONI R. SCHEINER, DEMETRA J. MILLS, and
FRANCISCO C. PRATS, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

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).
Appeal 2010-010996
Application 11/441,318

2
STATEMENT OF CASE
13. A catheter for forming a plastic stent at a position in a body
conduit of a patient, comprising:
an tubular filling area surrounding a part of the catheter and
positionable along a selected portion of the body conduit;
a plastic mass transferable to fill the tubular filling area and form the
stent by hardening the plastic mass in the filling area;
an envelope completely surrounding the filling area to prevent plastic
mass in the filling area from escaping into other portions of the body conduit
than the selected portion, and for influencing the form of the stent; and
an inner chamber of the catheter connected to the filling area that
temporarily accommodates the plastic mass.

Cited References

Tucci US 4,545,367 Oct. 8, 1985
Edwards et al. US 6,039,757 Mar. 21, 2000
Sgro US 6,063,112 May 16, 2000
Chouinard US 6,709,455 B1 Mar. 23, 2004
Liu et al. US 2004/0143209 A1 Jul. 22, 2004

Grounds of Rejection
Claims 13-14, 16-17, 21, 25-27, and 29-30 are rejected under 35
U.S.C. § 103(a) over Edwards in view of Sgro.
Claims 15 and 24 are rejected under 35 U.S.C. § 103(a) over Edwards
in view of Sgro and Tucci.
Claim 28 is rejected under 35 U.S.C. § 103(a) over Edwards in view
of Sgro and Chouinard.
Claim 18 is rejected under 35 U.S.C. § 103(a) over Edwards in view
of Sgro and Liu.

Appeal 2010-010996
Application 11/441,318

3
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Answer at pages 3-
7.

Discussion
ISSUE
The Examiner concludes that Edwards teaches each element of the
catheter claimed except an envelope completely surrounding the filling area.
(Ans. 4-5.) The Examiner relies on Sgro to make up for this deficiency,
arguing that Sgro discloses a permeable envelope surrounding a balloon
catheter which is impermeable to cell growth and thus must also be
impermeable to fluent thermoplastic. (Id. at 5, 9.)
Appellant argues that Sgro does not relate to the use of an envelope
for purposes of surrounding a filling area, and there is no motivation to
combine the cited references. (App. Br. 6.) Appellant argues that the
Examiner has not established with evidence that the permeable envelope of
Sgro which is impermeable to cell growth, would also be impermeable to
fluent thermoplastic and prevent the plastic mass in the filling area from
escaping into other portions of the body conduit. (Reply Br. 3.)
The dispositive issue is: Does the cited prior art support the
Examiner’s conclusion that the references suggest an envelope completely
surrounding the filling area to prevent plastic mass in the filling area from
escaping into other portions of the body conduit?

Appeal 2010-010996
Application 11/441,318

4
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. Only if that
burden is met, does the burden of coming forward with evidence or
argument shift to the applicant.” In re Rijckaert, 9 F.3d 1531, 1532 (Fed.
Cir. 1993) (citations omitted). In order to determine whether a prima facie
case of obviousness has been established, we consider the factors set forth in
Graham v. John Deere Co., 383 U.S. 1, 17 (1966): (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.
The burden is on the examiner to set forth a prima facie case of
unpatentability. See In re Glaug, 283 F.3d 1335, 1338 (Fed. Cir. 2002).
Moreover, “obviousness requires a suggestion of all limitations in a
claim.” CFMT, Inc. v. Yieldup Intern. Corp., 349 F.3d 1333, 1342 (Fed. Cir.
2003) (citing In re Royka, 490 F.2d 981, 985 (CCPA 1974)).

ANALYSIS
As there is a single dispositive issue in the case which is relevant to all
rejections before us, we address all the rejections together.
Claim 13 describes a catheter which requires an envelope completely
surrounding the filling area to prevent plastic mass in the filling area from
escaping into other portions of the body conduit. Appellant argues that the
Examiner has not established with evidence that the permeable envelope of
Sgro which is impermeable to cell growth, would also be impermeable to
Appeal 2010-010996
Application 11/441,318

5
fluent thermoplastic. (App. Br. 6-7, Reply Br. 3.) We are persuaded by
Appellant’s argument.
The burden is on the examiner to set forth a prima facie case of
unpatentability. See In re Glaug, 283 F.3d at 1338. We do not find that the
Examiner, in the first instance, has met the burden of establishing with
sufficient evidence that the “permeable” envelope of Sgro (Sgro, col. 5, l. 3)
which “prevents any proliferation of the cell layer inside the intracorporeal
lumen” (Sgro, col. 2 l. 62-64) is impermeable to the claimed plastic mass. In
addition to being made of a permeable material, the envelope of Sgro has
precuts (Fig. 1, 9a, 9b; col. 5, ll. 32-40). The Examiner has not shown that
these precuts in the envelope are not permeable to fluid plastic mass. The
preponderance of the evidence supports reversal of the rejections.
As each of the rejections before us is based on the combination of
Edwards and Sgro, we reverse the rejections for the reasons herein.

CONCLUSION OF LAW
The cited references do not support the Examiner’s obviousness
rejections.

REVERSED

cdc