Ex Parte Tischler et al

Board of Patent Appeals and Interferences

Feb 23, 2012

11753829 (B.P.A.I. Feb. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte BRIAN TISCHLER and CHAD PERRIN
__________

Appeal 2010-010628
Application 11/753,829
Technology Center 3700
__________

Before LORA M. GREEN, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

FREDMAN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a stent.
The Examiner rejected the claims as obvious. We have jurisdiction under 35
U.S.C. § 6(b). We reverse.

Appeal 2010-010628
Application 11/753,829

2
Statement of the Case
Background
“A stent is a medical device introduced to a body lumen . . .
[t]ypically, a stent is implanted in a blood vessel at the site of a stenosis or
aneurysm endoluminally” (Spec. 1, ll. 17-19).
The Claims
Claims 1-14 are on appeal. Claim 1 is representative and reads as
follows:
1. A stent comprising:
a plurality of longitudinally adjacent bands, the
longitudinally adjacent bands being connected by a plurality of
connectors,
each band comprising a plurality of interconnected
struts, each strut having a strut width, each strut further
having opposing strut end regions and a strut medial
region, the width of at least a portion of a strut end region
being greater than the width of at least a portion of the
strut medial region, within a band each strut end region
being connected to an adjacent strut end region at a turn,
each turn having a turn width,
each connector having a connector width, each
connector further having a first connector end region, a
second connector end region and a connector medial
region therebetween, the width of at least a portion of at
least one of the first connector end region and second
connector end region being greater than the width of at
least a portion of the connector medial region,
the first connector end region engaged to one turn of a
first band and the second connector end region engaged to one
turn of a second longitudinally adjacent band, the first and
second bands having connected turns and unconnected turns,
each connected turn having a greater width than the width of
each unconnected turn.

Appeal 2010-010628
Application 11/753,829

3
The issues

A. The Examiner rejected claims 1, 2, 10-12, and 14 under 35 U.S.C.
§ 103(a) as obvious over Duerig,1 Fischell,2 Lee,3 and Klein4 (Ans. 3-13).
B. The Examiner rejected claims 3-5 under 35 U.S.C. § 103(a) as
obvious over Duerig, Fischell, Lee, Klein, and Israel5 (Ans. 13-15).
C. The Examiner rejected claims 6-9 under 35 U.S.C. § 103(a) as
obvious over Duerig, Fischell, Lee, Klein, and Hong6 (Ans. 15-19).
D. The Examiner rejected claim 13 under 35 U.S.C. § 103(a) as obvious
over Duerig, Fischell, Lee, Klein, and Boylan7 (Ans. 19).
A. 35 U.S.C. § 103(a) over Duerig, Fischell, Lee, and Klein
The Examiner finds that Duerig teaches a stent (Ans. 5). However,
the Examiner finds that Duerig “fails to disclose a connector with at least a
portion of at least one of the first connector end region and the second
connector end region having a width greater than at least a portion of the
connector medial region” (id. at 5-6).
The Examiner relies on Fischell to teach a connector “with a first
connector end region . . . having a width greater than at least a portion of the
connector medial region” (id. at 6).

1 Duerig et al., US 6,190,406 B1, issued Feb. 20, 2001.
2 Fischell et al., US 2005/0049680 A1, published Mar. 3, 2005.
3 Lee et al., US 2003/0055485 A1, published Mar. 20, 2003.
4 Klein et al., US 5,922,020, issued Jul. 13, 1999.
5 Israel et al., US 5,733,303, issued Mar. 31, 1998.
6 Hong et al., US 6,565,599 B1, issued May 20, 2003.
7 Boylan et al., US 2002/0082681 A1, published Jun. 27, 2002.
Appeal 2010-010628
Application 11/753,829

4
The Examiner finds it obvious “to combine the connector disclosed
by Fischell et al. with the longitudinally adjacent bands connected by a
plurality of connectors disclosed by Duerig et al. because the connector with
a first end region having a greater width than at least a portion of the
connector medial region provides strain relief” (Ans. 6).
Appellants contend that in
contrast to the stent of Fischell, the stent of Duerig does not
have a portion that flares. Thus, the stent of Duerig does not
experience the strain discussed in Fischell. Because the stent
of Duerig does not flare, one of ordinary skill in the art,
looking at the disclosures of Duerig and Fischell, would not
be motivated to substitute the links 89 of Fischell for the
bridges 70 of Duerig.

(App. Br. 15.)
The issue with respect to this rejection is: Does the evidence of record
support the Examiner’s conclusion that Duerig, Fischell, Lee, and Klein
render claim 1 obvious?
Findings of Fact
1. We adopt the Examiner’s findings concerning the explicit
teachings in the prior art.
Principles of Law
“In proceedings before the Patent and Trademark Office, the
Examiner bears the burden of establishing a prima facie case of obviousness
based upon the prior art.” In re Fritch, 972 F.2d 1260, 1265 (Fed. Cir. 1992).
“Rejections on obviousness grounds cannot be sustained by mere
conclusory statements; instead, there must be some articulated reasoning
Appeal 2010-010628
Application 11/753,829

5
with some rational underpinning to support the legal conclusion of
obviousness.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
Analysis
While the Supreme Court in KSR eliminated the absolute requirement
for teaching, suggestion or motivation to combine references in an
obviousness rejection, the Court still required that there be some rationale or
reasoning or logic to support a conclusion of obviousness. KSR, 550 U.S. at
418. In this case, the Examiner’s rationale for modifying the connectors of
Duerig with those of Fischell is that “the modification would have been to
provide the necessary strain relief” (Ans. 6).
Appellants replied to this rationale by noting that “one end of the stent
flares and links 89 engage the flared portion to the rest of the stent” (App.
Br. 14). Appellants contend that in “contrast to the stent of Fischell, the
stent of Duerig does not have a portion that flares. Thus, the stent of Duerig
does not experience the strain discussed in Fischell” (id. at 15).
The Examiner responded that “[s]imply because the bands of Duerig
does not have a flaring as the band 86 of Fischell has [sic] does not mean
there is no strain on the bands which would require strain relief provided by
the bridges 89 of Fischell” (Ans. 20).
Appellants responded that
the Examiner did not provide any evidence as to other
strains a stent may experience, that the links 89 of Fischell
would reduce this other unidentified strain, or that one of
ordinary skill in the art would understand that the links 89 of
Fischell would reduce strain that was not caused by flaring.

(Reply Br. 3.)
Appeal 2010-010628
Application 11/753,829

6
We find that Appellants have the better position. A conclusion that
the claimed subject matter is prima facie obvious must be supported by
evidence, as shown by some objective teaching in the prior art or by
knowledge generally available to one of ordinary skill in the art that would
have led that individual to combine the relevant teachings of the references
to arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074 (Fed.
Cir. 1988).
The only rationale given by the Examiner to incorporate the
connectors of Fischell into the stent of Duerig is to provide strain relief, but
the Examiner has provided no evidence that the stent of Duerig would
experience any strain which would be relieved by the connectors of Fischell.
Nor has the Examiner even contended that such strain would be an inherent
property of stents or that there is some other reason or rationale, apart from
strain relief, to use the connectors of Fischell in the stent of Duerig.
Balancing the evidence presented, where the burden of demonstrating prima
facie obviousness rests on the Examiner, we conclude that the Examiner has
not satisfied that burden in this rejection.
Conclusion of Law
The evidence of record does not support the Examiner’s conclusion
that Duerig, Fischell, Lee, and Klein render claim 1 obvious.
B.-D. 35 U.S.C. § 103(a) rejections
In each of the further obviousness rejections, the Examiner does not
rely upon Israel, Hong, or Boylan to provide a rationale or evidence for
incorporating the connectors of Fischell into the stent of Duerig. Since these
Appeal 2010-010628
Application 11/753,829

7
references do not cure the deficiency in the primary rejection, we will not
sustain any of these rejections.
SUMMARY
In summary, we reverse the rejection of claims 1, 2, 10-12, and 14
under 35 U.S.C. § 103(a) as obvious over Duerig, Fischell, Lee, and Klein.
We reverse the rejection of claims 3-5 under 35 U.S.C. § 103(a) as
obvious over Duerig, Fischell, Lee, Klein, and Israel.
We reverse the rejection of claims 6-9 under 35 U.S.C. § 103(a) as
obvious over Duerig, Fischell, Lee, Klein, and Hong.
We reverse the rejection of claim 13 under 35 U.S.C. § 103(a) as
obvious over Duerig, Fischell, Lee, Klein, and Boylan

REVERSED

cdc