Ex Parte Vrijer et al

Board of Patent Appeals and Interferences

Jan 12, 2004

09350448 (B.P.A.I. Jan. 12, 2004)

1
The opinion in support of the decision being entered today
was not written for publication and is not binding precedent
of the Board.
Paper No. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte RICKIE BOUMA-DE VRIJER
and
HUGO MULDER
__________
Appeal No. 2003-0511
Application 09/350,448
__________
ON BRIEF
__________
Before GARRIS, WALTZ, and PAWLIKOWSKI, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the final rejection of
claims 1, 2, 5 and 6, which are all of claims remaining in the
application.
The subject matter on appeal relates to a stent delivery
system including a balloon catheter and stent which comprises a
Appeal No. 2003-0511
Application No. 09/350,448
2
balloon having a stent crimped therearound and a filling body of
elastic and radiopaque material arranged inside the balloon where
the filling body is compressed by the stent when the stent is in
a compressed state. Further details of this appealed subject
matter are set forth in representative independent claim 1 which
reads as follows:
1. A stent delivery system with a balloon catheter for
positioning a stent, comprising:
a tubular shaft with a proximal end and a distal end, and at
least one lumen extending in between,
an inelastic balloon near the distal end of the shaft which
is connected with the lumen,
a stent crimped around the balloon; and a filling body of
elastic and radiopaque material arranged inside the balloon and
affixed to the shaft, the filling body having a size
corresponding to at least a dimension of the stent in a
compressed state, where the filling body is compressed by the
stent when the stent is in a compressed state.
The reference set forth is relied upon by the examiner as
evidence of obviousness:
Dusbabek et al. (Dusbabek) WO 98/07390 Feb. 26, 1998
(published World Intell. Prop. Org. Application)
All of the appealed claims stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Dusbabek. The examiner
acknowledges that Dusbabek does not teach a stent delivery system
wherein the mounting body (which corresponds to the here-claimed
Appeal No. 2003-0511
Application No. 09/350,448
3
filling body) is radiopaque as well as elastic. Nevertheless,
the examiner expresses the following obviousness conclusion in
the paragraph bridging pages 4 and 5 of the Answer:
In view of the embodiment shown in figure 12, it
would have been obvious to one of ordinary skill in the
art to form the mounting body of figure 5, in a fixed
manner and also out of radiopaque material in order to
allow better visual tracking of the device and its
components through the body, particularly in light of
Dusbabek’s own teaching that “other marker arrangements
may be used” and since it is well-known in the art to
form various components of catheters out of radiopaque
material for visual tracking of the device in vivo.
We cannot sustain this rejection.
In resolving the issue of obviousness under Section 103, the
critical inquiry is whether there is something in the prior art
as a whole to suggest the desirability and thus the obviousness,
of making the modification proposed by the examiner. See Fromson
v. Advance Offset Plate, Inc., 755 F.2d 1549, 1556, 225 USPQ 26,
31 (Fed. Cir. 1985).
Here there is nothing in the Dusbabek teachings referred to
by the examiner which would have suggested the desirability, and
thus the obviousness, of modifying the elastic mounting body in
the Figure 5 catheter embodiment so as to be radiopaque as well
as elastic. It is true, as the examiner explains and the
appellants concede, that Dusababek discloses a number of
Appeal No. 2003-0511
Application No. 09/350,448
4
structural elements in his numerous catheter embodiments which
may be radiopaque including marker band 34 (e.g., see Figures 1-
3), other marker arrangements generally (e.g., see lines 25-26 on
page 14), as well as cups and/or collars (e.g., see Figure 38 et
seq. and lines 16-18 on page 35). However, the examiner has not
identified and we do not independently find any teachings of
Dusbabek which relate his elastic mounting body to a radiopaque
characteristic much less which would have suggested the
desirability, and thus the obviousness, of providing this
mounting body with such a characteristic.
On the record before us, the only disclosure which contains
the afore-noted suggestion is from the appellants’ own
specification. Under these circumstances, we believe that the
examiner, in formulating the rejection under review, has
unwittingly fallen victim to the insidious and impermissible
effect of hindsight syndrome wherein that which only the inventor
has taught is used against his teacher. W. L. Gore & Assocs. v.
Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303, 312-313 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
For the above-stated reasons, the examiner’s Section 103
rejection of all appealed claims as being unpatentable over
Dusababek cannot be sustained.
Appeal No. 2003-0511
Application No. 09/350,448
5
The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
BEVERLY A. PAWLIKOWSKI )
Administrative Patent Judge )
BRG:svt
Appeal No. 2003-0511
Application No. 09/350,448
6
Audley A. Ciamporcero, Jr., Esq.
Johnson & Johnson
One Johnson & Johnson Plaza
New Brunswick, NJ 08933