Ex Parte PACETTI

Patent Trial and Appeal Board

Jul 3, 2018

12882978 (P.T.A.B. Jul. 3, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/882,978 09/15/2010
45159 7590 07/06/2018
SQUIRE PB (Abbott)
275 BATTERY STREET, SUITE 2600
SAN FRANCISCO, CA 94111-3356
FIRST NAMED INVENTOR
Stephen D. PACETTI
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.
104584.00008 3936
EXAMINER
SCHALL, MATTHEW WAYNE
ART UNIT PAPER NUMBER
3738
NOTIFICATION DATE DELIVERY MODE
07/06/2018 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):
sfripdocket@squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte STEPHEND. PACETTI 1
Appeal2017-006761
Application 12/882,978
Technology Center 3700
Before TONI R. SCHEINER, FRANCISCO C. PRATS, and
RYAN H. FLAX, Administrative Patent Judges.
FLAX, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134(a) involving
claims to a stent for treating a diseased section of a blood vessel. The
Examiner's rejection of claims 12-16 under 35 U.S.C. § 103(a) is appealed.
We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse. 2
1 The Real Party in Interest is identified as "Abbott Cardiovascular Systems
Inc." Appeal Br. 2.
2 We have considered, and herein refer to, the Specification of Sept. 15,
2010 ("Spec."); Final Office Action of Jan. 21, 2016 ("Final Action");
Appeal Brief of Sept. 19, 2016 ("Appeal Br."); Examiner's Answer of Dec.
30, 2016 ("Answer"); and Reply Brief of Feb. 24, 2017 ("Reply Br.").
Appeal2017-006761
Application 12/882,978
STATEMENT OF THE CASE
Independent claim 12, reproduced below, is representative:
1. A stent for treating a diseased section of a blood vessel,
compnsmg:
a bioabsorbable polymeric scaffolding composed of a pattern of
struts, the pattern comprising a first cylindrical ring of struts and
a second cylindrical ring of struts,
wherein the first ring and the second ring are connected by
a set of breakable linking struts,
wherein each breakable linking strut has two discs
disposed between the rings, each of the discs having an unfilled
hole,
wherein the discs are in contact and connected at their
curved surfaces which forms a notch at the connection point,
wherein after deployment of the stent in a vessel of a
patient each link breaks at the connection point prior to struts in
the cylindrical rings.
Appeal Br. 10 (Claims App'x).
The following rejection is appealed:
Claims 12-16 stand rejected under 35 U.S.C. § 103(a) over Blank3
and Bregulla. 4 Final Action 2.
DISCUSSION
"[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting aprimafacie case ofunpatentability. If
that burden is met, the burden of coming forward with evidence or argument
shifts to the applicant." In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
3 US 2006/0173529 Al (pub. Aug. 3, 2006) ("Blank").
4 US 2006/0195175 Al (pub. Aug. 31, 2006) ("Bregulla").
2
Appeal2017-006761
Application 12/882,978
A proper § 103 analysis requires "a searching comparison of the
claimed invention-including all its limitations-with the teachings of the
prior art." In re Ochiai, 71F.3d1565, 1572 (Fed. Cir. 1995). "The
combination of familiar elements according to known methods is likely to be
obvious when it does no more than yield predictable results." KSR Int 'l Co.
v. Teleflex Inc., 550 U.S. 398, 416 (2007). "[R]ejections on obviousness
grounds cannot be sustained by mere conclusory statements; instead, there
must be some articulated reasoning with some rational underpinning to
support the legal conclusion of obviousness." Id. at 418 (quoting In re
Kahn, 441F.3d977, 988 (Fed. Cir. 2006)). "[D]ependent claims are
nonobvious if the independent claims from which they depend are
nonobvious." In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
The Examiner determined that the appealed claims would have been
obvious over Blank and Bregulla, as respectively indicated in the Final
Action and Answer. Final Action 2-3 and Answer 2-3 (citing Blank i-f 53,
Figs. 2, 6; citing Bregulla i-fi-16, 79-85, Fig. 14A).
Appellant argues the Examiner has not established the prior art,
namely Blank, discloses the claimed "discs are in contact and connected at
their curved surfaces." Appeal Br. 4--5. Appellant argues the Examiner has
determined Blank does not teach the claimed unfilled hole and that there
would be no reason to modify the Blank stent to add the Bregulla holes to
alter radiopacity or influence mechanical properties of the Blank stent. Id. at
5. Appellant further argues that, if Bregulla's holes were added to Blank's
stent for the purpose of altering radiopacity, they would have to be filled
3
Appeal2017-006761
Application 12/882,978
with a radiopaque marker and, thus, there would not be unfilled holes, as
claimed. Id. at 7.
Appellant's arguments are persuasive. As an initial matter, though not
argued by Appellant, it is unclear that the "bulbous cantilever end[ s ]" shown
in Figure 6 of Blank (i-f 74) could be considered "discs," as claimed. Even if
it could be concluded that these prior art features render a disc shape
obvious, the disclosed features of Blank are certainly not "in contact and
connected at their curved surfaces" to form "a notch at the connection
point," as claimed. Further, we agree with Appellant that, even if there was
motivation to modify Blank to add the radiopaque features of Bregulla,
doing so would not provide "an unfilled hole" as claimed, but would provide
apertures filled with radiopaque markers as taught by Bregulla at paragraphs
79--81. Without filling such holes/apertures, no radiopaque characteristic
would be achieved.
Because the Examiner has not established a prima facie case for
obviousness, we reverse the rejection.
SUMMARY
The obviousness rejection is reversed.
REVERSED
4