Ex Parte Leopold et alDownload PDFPatent Trial and Appeal BoardApr 19, 201813774814 (P.T.A.B. Apr. 19, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 131774,814 02/22/2013 27777 7590 04/23/2018 JOSEPH F. SHIRTZ JOHNSON & JOHNSON ONE JOHNSON & JOHNSON PLAZA NEW BRUNSWICK, NJ 08933-7003 FIRST NAMED INVENTOR Eric W. Leopold 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 ATTORNEY DOCKET NO. CONFIRMATION NO. MIC5019USDIV2 3901 EXAMINER TON, MARTIN TRUYEN ART UNIT PAPER NUMBER 3731 NOTIFICATION DATE DELIVERY MODE 04/23/2018 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address( es): jnjuspatent@corus.jnj.com lhowd@its.jnj.com pairjnj@firsttofile.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ERIC W. LEOPOLD, JOSEF L. FRIEDMANN, and NEAL H. PADILLA 1 (Applicant: DEPUY SYNTHES PRODUCTS, INC.) Appeal2017-003859 Application 13/774,814 Technology Center 3700 Before RICHARD J. SMITH, DEVON ZASTROW NEWMAN, and DAVID COTTA, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134 involving claims to a system for deploying an intravascular flow modifier and reinforcement device. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. 1 According to Appellants, the real party in interest is DuPuy Synthes Products, Inc., an affiliate of Johnson & Johnson. (Br. 1.) Appeal2017-003859 Application 13/774,814 STATEMENT OF THE CASE Claims on Appeal Claims 1-20 are on appeal. (Claims Appendix, Br. 7-9.) Claim 1 is illustrative and reads as follows (emphasis added): 1. A system for deploying an intravascular flow modifier and reinforcement device for use in the intravascular treatment of a target site in a patient's vasculature, the system comprising: an intravascular flow modifier and reinforcement device including a generally cylindrical frame formed of an elongate resilient wire configured as a series of a plurality of helical windings; a substantially tubular pusher catheter member having an inner lumen, a proximal portion, a distal portion, a tubular main shaft, and a notched portion including a first plurality of alternating notches and tubular shoulder portions formed in one side of the shaft of the pusher catheter member, and a second plurality of notches on an opposing side of the shaft of the pusher catheter member, each of said notches receiving a plurality of the plurality of helical windings; and a delivery catheter configured to removably retain said at least one helical winding on said notched portion of said pusher catheter member, wherein said substantially tubular pusher catheter member and the intravascular flow modifier and reinforcement device received on said notched portion of said pusher catheter member are disposed in the delivery catheter, and wherein said delivery catheter is configured to be withdrawn from said notched portion of said pusher catheter member when the intravascular flow modifier and reinforcement device 1s positioned at the site in the patient's vasculature to be treated. 2 Appeal2017-003859 Application 13/774,814 Examiner's Rejections 1. Claims 1-3 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Pinchasik, 2 Summers, 3 and Lenker. 4 (Final Act. 4--7. )5 2. Claims 4--13 and 20 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Pinchasik, Summers, Lenker, and Hom. 6 (Id. at 7-9.) 3. Claims 14 and 15 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Pinchasik, Summers, Lenker, Hom, and Steinke. 7 (Id. at 10.) 4. Claim 16 stands rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Pinchasik, Summers, Lenker, Hom, and Andreacchi. 8 (Id. at 10-11.) 5. Claims 17-19 stand rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable over Pinchasik, Summers, Lenker, Hom, and Ferrera. 9 (Id. at 11-12.) FINDINGS OF FACT The following findings are provided for emphasis and reference purposes. FF 1. The Specification refers to an intravascular flow modifier and reinforcement device as a "stent." (Spec. i-fi-13, 11.) 2 Pinchasik, US 6,514,285 Bl, issued Feb. 4, 2003. 3 Summers et al., US 5,772,668, issued June 30, 1998 ("Summers"). 4 Lenker et al., US 5,824,041, issued Oct. 20, 1998 ("Lenker"). 5 Office Action dated Nov. 4, 2015. 6 Hom et al., US 5,591,230, issued Jan. 7, 1997 ("Hom"). 7 Steinke, US 6,224,626 Bl, issued May 1, 2001. 8 Andreacchi, US 6,679,980 Bl, issued Jan. 20, 2004. 9 Ferrera, US 6,168,570 Bl, issued Jan. 2, 2001. 3 Appeal2017-003859 Application 13/774,814 FF 2. The Examiner finds that Pinchasik teaches a system for deploying an intravascular flow modifier and reinforcement device (i.e., a stent ), comprising a stent having a generally cylindrical frame formed of an elongate resilient wire configured as a series of a plurality of windings, a substantially tubular pusher catheter member having an inner lumen, a proximal portion, a distal portion, a tubular main shaft, and a notched portion including a first plurality of alternating notches and tubular shoulder portions formed in one side of the shaft of the pusher catheter member, and a second plurality of notches on an opposing side of the shaft of the pusher catheter member. (Final Act. 4, citing Pinchasik Figures 8A (24), 8C (120), and 15A (25).) FF 3. The Examiner finds that Summers teaches a system for deploying a helical stent (i.e., an intravascular flow modifier and reinforcement device) that has a double spiral configuration, "wherein the delivery system includes a pair of notches to hold portions of a plurality of windings of the stent." (Final Act. 5, citing Summers Figure 5 (18, 20, 22, 28, and 30), Figure 1 (10, 14, and 16).) FF 4. The Examiner finds that Lenker teaches a system for deploying a stent device, wherein the device incudes a system having a release wire similar to the mechanism of the Pinchasik reference, wherein the device further includes a delivery catheter configured to [] removably retain the stent, wherein a substantially tubular pusher catheter member and the stent are disposed in the delivery catheter, and "wherein said delivery catheter is configured to be withdrawn from said release portion of [said] pusher catheter member when the stent is positioned at the site in the patient's vasculature to be treated[,] for delivery of the stent to the site in the patient's 4 Appeal2017-003859 Application 13/774,814 vasculature to be treated." (Final Act. 6, citing Lenker Figure 16 (P, 152, and 164) and col. 10, 11. 3-27.) DISCUSSION We adopt the Examiner's findings and conclusions as our own, including with regard to the scope and content of, and motivation to combine, the prior art, as set forth in the Final Action (Final Act. 4--12) and Answer (Ans. 2-3). We discern no error in the rejections of the claims as obvious (Rejection Nos. 1-5). Rejection No. 1 Issue Whether a preponderance of evidence of record supports the Examiner's rejection under pre-AIA 35 U.S.C. § 103(a). Analysis We limit our consideration to claim 1 because the claims were not argued separately. The Examiner concludes that it would have been obvious to a person having ordinary skill in the art at the time of invention to modify the notches of the device of [] Pinchasik in order to accommodate the double spiral stent structure of the Summers reference at, at least the ends of the stent, in order to deliver a double spiral stent that can be temporarily formed into an alternative straight or coiled shape having a reduced diameter (Summers; Column 3, Lines 3-25). Additionally, a person having ordinary skill in the art has good reason to pursue the known options within his or her technical grasp if it yields predictable results, making it obvious to substitute one intravascular flow modifier and reinforcement device for another. (Final Act. 5---6.) 5 Appeal2017-003859 Application 13/774,814 The Examiner further concludes that it would have been obvious to a person having ordinary skill in the art at the time of invention to have the system of the Pinchasik reference include the delivery catheter of the Lenker reference to provide a method of radially compressing the intra vascular flow modifier and reinforcement device into its desired low profile diameter and to recapture the device when it is partially deployed (Lenker; Column 10, Lines 3-27). (Id. at 6.) We agree with the Examiner's conclusions of obviousness. (See FF 1--4.) In particular, we agree that it would have been obvious to substitute the double spiral stent of Summers for the stent of Pinchasik. As the Supreme Court explained in KSR, "when a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result." KSR Int 'l v. Teleflex Inc., 550 U.S. 398, 416 (2007); see also id. at 417 ("[W]hen a patent 'simply arranges old elements with each performing the same function it had been known to perform' and yields no more than one would expect from such an arrangement, the combination is obvious.") (quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282 (1976)). The only argument advanced by Appellants is that "Summers does not teach nor suggest[] that each of the notches receives a plurality of the plurality of helical windings, as required by independent claim 1." (Br. 4.) We are not persuaded. As illustrated in Figures 1 and 5 of Summers, notches 28 and 30 receive two ("a plurality") of the helical windings (identified as 14 and 16) of stent 10. (See Summers Figures 1 and 5 and col. 3, 11. 3-25; see also Ans. 2-3; Summers Figures 9-11.) Appellants do not 6 Appeal2017-003859 Application 13/774,814 persuasively explain why Summers does not teach or suggest the subject claim limitation. Accordingly, for the reasons of record and as set forth above, we affirm the Examiner's rejection of claim 1. Claims 2-3 fall with claim 1 because the claims were not argued separately. Rejection Nos. 2-5 Appellants respond to each of obviousness Rejection Nos. 2-5 by stating that "[t]he rejection of [the respective claims] stands or falls with the rejection of independent claim 1." (Br. 5---6.) Accordingly, because Appellants advance no additional arguments, we affirm the rejections of claims 4--20 for the reasons of record and as set forth above in connection with Rejection No. 1. Conclusions of Law A preponderance of evidence of record supports the Examiner's rejections of claims 1-20 under pre-AIA 35 U.S.C. § 103(a). SUMMARY We affirm the rejections of all claims on appeal. 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 7 Copy with citationCopy as parenthetical citation