Ex Parte Case

Board of Patent Appeals and Interferences

May 16, 2012

11210999 (B.P.A.I. May. 16, 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.
11/210,999 08/24/2005 Brian C. Case 1000-055 5193
42715 7590 05/17/2012
Buchanan Nipper LLC
P.O. Box 700
Perrysburg, OH 43552
EXAMINER
MASHACK, MARK F
ART UNIT PAPER NUMBER
3773
MAIL DATE DELIVERY MODE
05/17/2012 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 BRIAN C. CASE
____________

Appeal 2010-005242
Application 11/210,999
Technology Center 3700
____________

Before STEFAN STAICOVICI, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Brian C. Case (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s final rejection of claims 12-15, 18, 19, 22-26, and 28-31.
Appellant cancelled claims 1-11, 16, 17, 20, 21, and 27. Appellant’s
representative presented oral argument on May 8, 2012. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2010-005242
Application 11/210,999

2
The Claimed Subject Matter
The claimed subject matter is directed to “intraluminal medical
devices, generally, and their placement within body vessels.” Spec. 1, para.
[0002]. Claims 12, 19, and 22 are independent. Claim 12, reproduced
below, with italics added, is illustrative of the subject matter on appeal.
12. A delivery system for placing multiple
prosthetic valves within a body vessel, comprising:
an elongate member comprising a proximal
end, a distal end, a proximal mounting region, and
a distal mounting region;
a first prosthetic valve disposed on the
proximal mounting region, the first prosthetic
valve having a first dimension suitable for a first
point of treatment within said body vessel;
a second prosthetic valve disposed on the
distal mounting region, the second prosthetic valve
having a second dimension suitable for a second
point of treatment within said body vessel and
being different than the first dimension; and
a sheath disposed over at least a portion of
the elongate member and the first and second
prosthetic valves;
wherein the proximal and distal mounting
regions are axially separated by a predetermined
distance that is based upon one or more features of
said body vessel.

App. Br., Clms. App’x.

The Rejections
The following Examiner’s rejections are before us for review.
Claims 12, 13, 15, 18, 19, 22-26, and 28-31 are rejected under 35
U.S.C. § 103(a) as unpatentable over Shaolian (US 2003/0055492 A1,
Appeal 2010-005242
Application 11/210,999

3
published Mar. 20, 2003) and Chew (US 2003/0135266 A1, published Jul.
17, 2003).
Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Shaolian, Chew, and Limon (US 6,007,295, issued Jun. 20, 2000).

OPINION
Obviousness based on Shaolian and Chew
The Examiner finds that Shaolian substantially discloses the delivery
system of independent claims 12, 19, and 22, including an elongate member
120 having first/proximal and second/distal mounting regions. Ans. 3-4. As
the Appellant points out “Shaolian fails to disclose proximal and distal
mounting regions on an elongate member that are axially separated by a
predetermined distance that is based upon one or more features of a body
vessel.” App. Br. 10. More particularly, Shaolian discloses that any
predetermined distance between mounting regions of discrete venous valve
grafts 40 is based on the a physician’s clinical judgment, not a structural
characteristic of the elongate member based on one or more features of said
body vessel, as is required by independent claims 12, 19, and 22. See paras.
[0045]-[0046].
The Examiner turns to Chew for the teaching of “the deployment of
multiple discrete self-expanding endoluminal prosthesis using a common
delivery catheter.” Ans. 5. The Examiner concludes that “[g]iven the
teachings of Chew, it would have been obvious to one of ordinary skill in the
art . . . to modify the device of Shaolian by placing the multiple valves on
one common catheter,” because “[d]oing so would facilitate the delivery of
the multiple valves (Paragraph 7).” Id.
Appeal 2010-005242
Application 11/210,999

4
Appellant contends that “Chew does not cure the failure of Shaolian
to teach the required relative axial positioning between two mounting
regions,” because “Chew is completely devoid of any teaching or suggestion
of the axial spacing between mounting regions on the elongate member as
required by independent claims 12, 19, and 22.” Id. Indeed, Appellant
points out that Chew’s stents have mounting regions that abut one another or
“are spaced from each other by a distance based on the length of ‘frangible
coupling elements 124’ that connect adjacent stents.” App. Br. 10-11; see
Chew figs. 8A-C, 9A-C, para. [0067].
Chew teaches numerous embodiments of apparatus and methods for
delivery of multiple distributed stents. Title. In a first embodiment, Chew
discloses stents 30 that are all located abutting each other so that there is no
teaching of a predetermined axial spacing between the stents 30 that is based
upon one or more features of the body vessel. See Figs. 1, 2, and 3A-3F.
Chew also discloses a second embodiment wherein two prosthesis 60 may
be directly abutted against each other and this “configuration is
advantageous in that it provides for a substantially continuous stent or graft
structure when the pair is expanded together in a body lumen.” See Fig. 5C
and para. [0062]. However, when flexibility is desired at the point where the
two prostheses 60 meet, “a coupling element 62ʹ can have an elongated
shank to provide for a desired offset, typically in the range from 0.05 mm to
1 mm, preferably from 0.1 mm to 0.5 mm.” See Fig. 5D and para. [0062].
Thus, in this embodiment, although a predetermined axial spacing is
disclosed, it is not taught to be based upon one or more features of the body
vessel. Chew also discloses “[a] third approach for detachably coupling
adjacent prostheses 80,” wherein “the adjacent prostheses 80 are joined by
Appeal 2010-005242
Application 11/210,999

5
an axial beam 82 which preferably includes a weakened segment 84 near its
midpoint.” See Fig. 7 and para. [0065]. Again, a predetermined axial
spacing is disclosed, but there is no teaching that the spacing is based upon
one or more features of the body vessel. Finally, Chew also discloses an
embodiment having a catheter 20 for releasing self-expanding prostheses
122 which are mechanically linked by frangible coupling elements 124. See
Figs. 9A-9C and paras. [0067]-[0069]. As with previous embodiments, a
predetermined axial spacing between prostheses 122 is disclosed, i.e., the
length of frangible coupling elements 124, but there is no teaching that the
spacing is based upon one or more features of the body vessel.
In view of the foregoing, we agree with Appellant that neither
Shaolian nor Chew teaches the predetermined distance between mounting
regions, a structural characteristic of the elongate member, is based on one
or more features of said body vessel, as required by claims 12, 19, and 22.
App. Br. 10. Thus, neither Shaolian nor Chew teach mounting regions that
“are axially separated by a predetermined distance that is based upon one or
more features of said body vessel” as is recited in independent claims 12 and
19. See App. Br., Clms. App’x. Further, neither Shaolian nor Chew teach
that “the predetermined distance is based upon a desired distance between
the first and second expandable medical devices following deployment from
the mounting regions and upon one or more features of said body vessel,” as
recited in claim 22. See App. Br., Clms. App’x.
Accordingly, we do not sustain the Examiner’s rejection of
independent claims 12, 19, and 22, and claims 13, 15, 18, 23-26, and 28-31
dependent thereon, under 35 U.S.C. § 103(a) as unpatentable over Shaolian
and Chew.
Appeal 2010-005242
Application 11/210,999

6
Obviousness based on Shaolian, Chew, and Limon
The remaining rejection based on Shaolian and Chew in combination
with Limon relies on the same reasoning as discussed supra. The
Examiner’s additional finding with respect to Limon (see Ans. 5-6) does not
cure the deficiency of the combination of Shaolian and Chew as pointed out
in connection with the rejection of independent claim 12. Thus, for the same
reasons as discussed supra, we do not sustain the Examiner’s rejection of
claim 14 under 35 U.S.C. § 103(a) as unpatentable over Shaolian, Chew, and
Limon.

DECISION
We reverse the Examiner’s rejections of claims 12-15, 18, 19, 22-26,
and 28-31.

REVERSED

Klh