11363426 (B.P.A.I. Jul. 24, 2012)

Ex Parte Vogel et al

Board of Patent Appeals and InterferencesJul 24, 2012

11363426 (B.P.A.I. Jul. 24, 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. 11/363,426 02/27/2006 Bernd Vogel K 248 6960 7590 07/24/2012 Klaus J. Bach 4407 Twin Oaks Drive Murrysville, PA 15668 EXAMINER MASHACK, MARK F ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 07/24/2012 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 BERND VOGEL, HARALD FISCHER, and MARCO KLEIN ____________________ Appeal 2010-004335 Application 11/363,426 Technology Center 3700 ____________________ Before: LINDA E. HORNER, JOHN C. KERINS, and WILLIAM V. SAINDON, Administrative Patent Judges. SAINDON, Administrative Patent Judge. DECISION ON APPEAL Appeal 2010-004335 Application 11/363,426 2 STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-5, 8, and 10. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. Claim 1, reproduced below, is illustrative of the claimed subject matter. 1. A compression sleeve for the local enclosure of a blood vessel or a vein valve area, comprising a flexible mat of a bio-compatible material for wrapping around the blood vessel and means for maintaining the mat wrapped around the blood vessel, said mat consisting of a foil with a plurality of openings cut out of the foil by one of a laser cutting, etching, and erosion method so as to form a flat, thin mesh, or net-like structure with flat thin webs extending around the openings. REJECTIONS I. Claims 1-5 and 8 are rejected under 35 U.S.C. § 102(b) as anticipated by Khosravi (US 5,441,515, iss. Aug. 15, 1995). II. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Khosravi and Melzer (US 6,280,385 B1, iss. Aug. 28, 2001). OPINION Rejection I —Anticipation by Khosravi Sole independent claim 1 requires, in relevant part, a compression sleeve for “local enclosure of a blood vessel or a vein valve area” and “for wrapping around the blood vessel.” The Examiner found that Khosravi discloses a compression sleeve “capable of the local enclosure of a blood vessel or vein valve area,” “for wrapping around the blood vessel (stent Appeal 2010-004335 Application 11/363,426 3 wraps around the perimeter of a blood vessel)” and having a “means for maintaining the mat wrapped around the blood vessel.” Ans. 3. The Examiner asserts that the apparatus disclosed by Khosravi “is intended to enclose the lumen of the blood vessel which is considered part of the blood vessel.” Ans. 5. Appellants argue that Khosravi does not disclose a compression sleeve but rather an expansion sleeve. App. Br. 3. Appellants argue that a compression sleeve is placed around an over-expanded blood vessel section and then compressed in order to prevent expansion and rupture of the vessel. Id. On the other hand, Appellants argue, the expansion sleeve disclosed by Khosravi is deployed within the interior of a vessel in a contracted state and then expanded to increase its diameter to enhance flow through the treated vessel. Id. Accordingly, Appellants raise the issue of whether the Khosravi device satisfies the limitations of claim 1 directed to a compression sleeve for “local enclosure of a blood vessel or a vein valve area” and “for wrapping around the blood vessel.” “[W]hen the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990) (citing In re King, 801, F.2d 1324, 1327 (Fed. Cir. 1986) and In re Ludtke, 441 F.2d 660, 664 (CCPA 1971)). In this case, however, the Examiner has not shown a sound basis to shift the burden to Appellants. The Examiner contends that the claim limitations drawn to “a compression sleeve for the local enclosure” of a blood vessel is functional language addressing the use of the claimed invention. Ans. 5. The Examiner argues that the Khosravi device is capable of performing “more functions” than those disclosed in the reference. Id. However, the Examiner Appeal 2010-004335 Application 11/363,426 4 has failed to provide findings or analysis to explain how the Khosravi device would satisfy the functions of the claimed invention. While the Khosravi device may be physically capable of being wrapped around a blood vessel, claim 1 requires a compression sleeve, not just any structure wrapped around a blood vessel. By its plain language, a compression sleeve is capable of providing compression. The Khosravi device, on the other hand, is designed to expand to alleviate the likelihood of restenosis (narrowing) of the blood vessel. See, e.g., col. 1, ll. 7-10 (“expandable intraluminal vascular grafts, generally called stents”), 15-16 (intended to “help reduce the likelihood of restenosis”). Accordingly, the Khosravi device would appear to resist compression in order to combat restenosis and would not appear to be capable of providing compression (such as to be considered a “compression sleeve”). In light of the above, the Examiner has not provided a sound basis for asserting that the claimed device is the same as that disclosed by Khosravi. Accordingly, the Examiner’s finding that the Khosravi reference anticipates the subject matter of claim 1 is in error. As such, we do not sustain the Examiner’s rejection of independent claim 1. Likewise, we do not sustain the Examiner’s rejection of claims 2-5 and 8, which depend therefrom. Rejection II —Obviousness over Khosravi and Melzer The Examiner’s separate rejection of claim 10 as obvious in view of Khosravi and Melzer does not cure the deficiencies of the Khosravi reference with regard to the claimed compression sleeve, as discussed above. Accordingly, we do not sustain the Examiner’s rejection of claim 10. Appeal 2010-004335 Application 11/363,426 5 DECISION I. We REVERSE the Examiner’s decision to reject claims 1-5 and 8 as anticipated by Khosravi. II. We REVERSE the Examiner’s decision to reject claim 10 as obvious over Khosravi and Melzer. REVERSED hh