Ex Parte Wintsch et al

Patent Trial and Appeal Board

Oct 15, 2018

13090479 (P.T.A.B. Oct. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/090,479 04/20/2011
59538 7590 10/17/2018
Wagenknecht IP Law Group, PC
12396 WORLD TRADE DRIVE
SUITE 312
SAN DIEGO, CA 92128
FIRST NAMED INVENTOR
Daniel Wintsch
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.
10155-100189 2548
EXAMINER
SCHALL, MATTHEW WAYNE
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
10/17/2018 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):
office@wageniplaw.com
docketing@wageniplaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DANIEL WINTSCH, STEP AN LO HER,
BODO QUINT, PATRICE BACHMANN, HANS LANG,
DRAGICA P ANTIC, and AL WIN SCHWITZER 1
Appeal2017-009706
Application 13/090,479
Technology Center 3700
Before: ULRIKE W. JENKS, ELIZABETH A. LA VIER, 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 an endovascular stent. The Examiner's rejection of claims 1-8 and
16-21 under 35 U.S.C. § 102(b) is appealed. We have jurisdiction under
35 U.S.C. § 6(b ).
We reverse.
1 The Real Party in Interest is identified as "BIOTRONIK AG." Appeal
Br. 3. We herein refer to the Specification of Apr. 20, 2011 ("Spec."); Final
Office Action Aug. 11, 2016 ("Final Action"); Appeal Brief of Jan. 10, 2017
("Appeal Br."); Examiner's Answer of May 9, 2017 ("Answer"); and Reply
Brief of July 7, 2017 ("Reply Br.").
Appeal2017-009706
Application 13/090,479
STATEMENT OF THE CASE
Independent claim 1, reproduced below, is representative:
1. An endovascular stent comprising:
a basic structure formed as a hollow cylinder;
a nonwoven fabric disposed in and/or on the basic
structure, the nonwoven fabric comprising a biocompatible
thermoplastic polyurethane and/or a polymer selected from the
group consisting of polylactic acid, polycaprolactone, a
copolymer thereof, and a polyphosphazene;
wherein a proximal and/ or a distal end of the stent, further
comprises a fastening means to prevent or reduce, at least in an
expanded state of the stent, either:
a protrusion of nonwoven fabric sections from the basic
structure, and/or formation of more extensive regions,
which comprises fibers or fiber sections protruding from
the basic structure.
Appeal Br. 19 (Claims Appendix).
The following rejection is on appeal:
Claims 1-8 and 16-21 stand rejected under 35 U.S.C. § I02(b) as
anticipated by Hwang. 2 Final Action 2; see also Answer 2-3.
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).
"Anticipation requires that all of the claim elements and their limitations are
2 US 2004/0267362 Al (pub. Dec. 30, 2004) ("Hwang").
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Appeal2017-009706
Application 13/090,479
shown in a single prior art reference." In re Skvorecz, 580 F.3d 1262, 1266
(Fed. Cir. 2009).
The Examiner determined claims 1-8 and 16-21 are anticipated by
Hwang. Final Action 2-3 and Answer 2-3 (collectively citing Hwang ,r,r 13,
47, 57, 86, 88, 89, 91, Figures 1, 6).
Appellants argue Hwang does not disclose a "stent" having "a basic
structure formed as a hollow cylinder" and having "an expanded state."
Appeal Br. 11-15. Appellants contend the claim term "stent" means "a
metal or plastic tube inserted into the lumen of an anatomic vessel or duct to
keep the passageway open." Id. at 12. Appellants also argue Hwang does
not disclose "a fastening means to prevent or reduce, at least in an expanded
state of the stent, either: a protrusion of nonwoven fabric sections from the
basic structure, and/or formation of more extensive regions, which
comprises fibers or fiber sections protruding from the basic structure." Id. at
15-16.
On balance, we find the evidence on appeal favors the Appellants'
position. Claim 1 recites a "stent," not only in the preamble, but in the body
of the claim, making it a limitation. While Hwang may be read to disclose a
hollow cylinder (see, e.g., Hwang ,r 91), Hwang does not disclose such a
device being a stent or having "an expanded state." Even if Hwang
discloses tubes or spring-shaped scaffolds, it is unclear how the devices of
Hwang could be used as stents (i.e., Hwang does not teach that its devices
are capable of keeping a vessel open). In any event, as argued by
Appellants, Hwang does not teach a stent with an expanded state, as
claimed.
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Appeal2017-009706
Application 13/090,479
SUMMARY
The anticipation rejection is reversed.
REVERSED
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