Ex Parte Tischler

Patent Trial and Appeal Board

Nov 30, 2012

12169515 (P.T.A.B. Nov. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BRIAN TISCHLER
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Appeal 2011-013246
Application 12/169,515
Technology Center 3700
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Before MELANIE L. McCOLLUM, STEPHEN WALSH, and
ULRIKE W. JENKS, Administrative Patent Judges.

WALSH, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the rejection of
claims directed to a stent, a catheter assembly, and a method of deploying a
stent. The Patent Examiner rejected the claims for obviousness. We have
jurisdiction under 35 U.S.C. § 6(b). We reverse.
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Application 12/169,515

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STATEMENT OF THE CASE
The invention relates to a stent comprising a first stent body and a
second stent body, the first stent body being a rolled stent and the second
stent body being a tubular stent. (Spec. 2, ll. 14-16.) Claims 1, 3-9, and 11-
14 are on appeal. Claim 1 is illustrative and reads as follows:
1. A stent, the stent comprising:
a first stent body, the first stent body being a rolled stent having
a first end and a second end, the first stent body comprising a plurality of
circumferential bands and a plurality of connectors, each circumferential
band comprising a plurality of struts engaged one to another by turns,
wherein some of the turns in a circumferential band are peaks and others are
troughs, adjacent circumferential bands being engaged by a plurality of
connectors separated one from another by a single tum;
a second stent body, the second stent body being a tubular stent,
the second stent comprising a plurality of circumferential bands and a
plurality of connectors, each circumferential band comprising a plurality of
struts engaged one to another by turns, wherein some of the turns in a
circumferential band are peaks and others are troughs, adjacent
circumferential bands being engaged by a plurality of connectors separated
one from another by at least two turns; and
the stent having a deployed state, the second stent body at least
partially disposed within the first stent body when the stent is in the
deployed state, the first end of the first stent body overlapping the second
end of the first stent body for a first overlap length when the stent is in
the deployed state.

The Examiner rejected all the claims under 35 U.S.C. § 103(a) as
unpatentable over Rourke,1 Gianturco,2 Khosravi,3 Sigwart,4 and
Thompson.5

1 Jonathan M. Rourke et al., US 6,312,463 B1, issued Nov. 6, 2001.
2 Cesare Gianturco, US 4,580,568, issued April 8, 1986.
3 Farhad Khosravi et al., US 5,824,053, issued Oct. 20, 1998.
4 Ulrich Sigwart, US 5,443,500, issued Aug. 22, 1995.
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Application 12/169,515

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OBVIOUSNESS
The Issue
The Examiner’s position is that Rourke described a stent comprising a
first stent body in the form of a rolled sheet [element 12 in Rourke’s Figure
1] and a second, tubular, stent body [element 14 in Rourke’s Figure 1].
(Ans. 4.) The Examiner found that a first difference between Rourke’s stent
and Appellant’s stent is that Rourke’s first stent body was a rolled sheet with
a closed cell or mesh pattern, rather than having a plurality of
circumferential bands and a plurality of connectors. (Id. at 5.) The
Examiner found however that Rourke incorporated Sigwart’s disclosure by
reference, and that Sigwart, in turn, described “other configurations for a
rolled sheet stent structure.” (Id.) The Examiner concluded “[t]he rolled
sheet stent disclosed by Sigwart is analogous to the rolled sheet stent (12) of
Rourke, so one of ordinary skill . . . would have found it obvious to
substitute the closed cell structure taught by Sigwart for the rolled stent of
Rourke.” (Id.)
The Examiner found that a second difference between Rourke’s stent
and Appellant’s stent is that although Rourke’s second stent body was
tubular, it did not have the plurality of circumferential bands and connectors
defined in Appellant’s claim. (Id.) The Examiner found however that
Rourke incorporated Thompson’s disclosure by reference, and that
Thompson, in turn, described the requisite tubular structure. (Id.) The
Examiner concluded that it would have been obvious “to substitute the

5 Paul J. Thompson et al., US 6,623,518 B2, issued Sept. 23, 2003.
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Application 12/169,515

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second stent of Rourke[’s] device with the tubular stent taught by
Thompson, as this modification would involve a mere substitution of one
known element for another to obtain the predictable result of providing a
tubular, open cell stent.” (Id. at 5-6.)
Appellant discusses the details of Rourke’s description for the “micro-
porous tubular element 12,” noting in particular the functions Rourke
required the structure to perform. (App. Br. 14.) In particular, Appellant
identifies Rourke’s disclosures that:
the openings of element 12 have a maximum open dimension of not
more than about 400 micrometers (0.016 inch) and that the openings
are spaced such that “not more than about 20 percent of the overall
surface area of the vessel wall covered by the tubular element 12 is
directly engaged with stent material;” [and the] microporous element
traps embolic material against the vessel wal1.

(Id., quoting Rourke, col. 4.)
Appellant acknowledges that Rourke taught using the Sigwart or
Thompson stents for support element 14, but argue that “Rourke does not
teach or suggest that Sigwart is an alternative to element 12.” (Id. at 15,
citing Rourke, col. 6.) Appellant further argues that because Sigwart did not
include specific structural limitations Rourke required for element 12 to
perform its functions, “the Examiner’s assertion that using the Sigwart stent
for element 12 of the Rourke stent would be ‘mere substitution’ is
speculative,” not fact-based. (Id. at 16.)
The Examiner responds:
the rolled sheet stent with a closed cell pattern disclosed by Sigwart is
analogous to the rolled sheet stent (12) with a closed cell pattern
disclosed by Rourke. Since the rolled sheet stent structures are used
for the same purpose of supporting vessels and function in a similar
manner, one of ordinary skill in the art at the time the invention was
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made would have expected the substitution of the Sigwart rolled sheet
structure for the rolled sheet stent component of the Rourke device to
provide predictable results.

(Ans. 8.)
Appellant in reply repeats the argument that Rourke’s element 12 is
not analogous to Sigwart’s stent because Rourke required element 12 to have
features for performing functions (trapping embolic material, etc.) that
Sigwart did not address structurally or functionally. (Reply Br. 2-3.)

Findings of Fact
1. Rourke’s Figure 1 is reproduced here:

“FIG. 1 is a perspective view of a first preferred embodiment
of a two-stage stent in accordance with the present
invention, including a micro-porous tubular element and a
support element.” (Rourke, col. 3, ll. 59-62.)

2. Rourke disclosed:
The micro-porous tubular element 12 . . . having a plurality of
openings 16 defining a micro-porous mesh pattern therein. The mesh
pattern is “micro-porous” in that the openings 16 are sufficiently small
such that they substantially prevent plaque or other embolic material
from extending through the openings 16. Thus, the tubular element 12
may behave as a filter, allowing endothelial growth to occur through
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the openings 16 while substantially protecting the patient from the
release of embolic material through the mesh pattern. Openings 16
having a maximum open dimension of not more than about 400
micrometers (0.016 inch) are preferred to provide an effective
microporous mesh pattern . . . .

(Id. at col. 4, ll. 31-44.)

Analysis
After considering the evidence and arguments, we conclude that
Appellant has the better position. The rejection is based on the idea that
Sigwart’s stent is “analogous” to Rourke’s element 12 and would therefore
be a satisfactory substitute for element 12. Appellant has persuasively
rebutted the idea that mere analogy is sufficient for a satisfactory substitute
by pointing to Rourke’s requirements for element 12. (See FF 2.) The
rejection is reversed for the reason summarized in the Reply Brief:
If a person of ordinary skill in the art were to use a substitute
for element 12 of Rouke, the person would choose a substitute that
has the attributes disclosed for element 12. However, Sigwart does not
teach or suggest that the Sigwart stent has any of these attributes.
Therefore, one of ordinary skill would not substitute the Sigwart stent
for element 12 of the Rourke device.

(Reply Br. 3.)

SUMMARY
We reverse the rejection of claims 1, 3-9, and 11-14 under 35 U.S.C.
§ 103(a) as unpatentable over Rourke, Gianturco, Khosravi, Sigwart, and
Thompson.

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Application 12/169,515

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REVERSED

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