Ex Parte DesNoyer

Board of Patent Appeals and Interferences

Mar 23, 2012

11299130 (B.P.A.I. Mar. 23, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JESSICA RENEE DESNOYER
__________

Appeal 2010-012094
Application 11/299,130
Technology Center 3700
__________

Before DEMETRA J. MILLS, LORA M. GREEN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner‟s rejection of claims 1-3 and 5-23. We have jurisdiction under 35
U.S.C. § 6(b).
Appeal 2010-012094
Application 11/299,130

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STATEMENT OF THE CASE
Claim 1 is representative of the claims on appeal, and read as follows:
1. A stent comprising a coating having an adhesion polymer in an
amount effective to cause the stent not to unintentionally dislodge from a
catheter balloon on which the stent is mounted, wherein the adhesion
polymer has a glass transition temperature between about 25 °C and about
45 °C.

The following grounds of rejection are before us for review:
I. Claims 1, 2, 3, 8-11, 13-18, 20, 22, and 23 stand rejected under 35
U.S.C. § 103(a) as being rendered obvious by the combination of
Webler
1
and Chu
2
(Ans. 4). As Appellant does not argue the
claims separately, we focus our analysis on claim 1, and claims 2,
3, 8-11, 13-18, 20, 22, and 23 stand or fall with that claim. 37
C.F.R. § 41.37(c)(1)(vii).
II. Claims 12 and 19 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Webler and Chu as further
combined with Tuch
3
(Ans. 12).
III. Claims 5-7 and 21 stand rejected under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Webler and Chu as
further combined with Gregorich
4
(Ans. 13).

We affirm.

1
Webler, Jr. et al., US 6,682,553 B1, issued Jan. 27, 2004.
2
Chu et al., US 6,503,538 B1, issued Jan. 7, 2003.
3
Tuch, US 5,776,184, issued Jul. 7, 1998.
4
Gregorich, US 2004/0243216 A1, published Dec. 2, 2004.
Appeal 2010-012094
Application 11/299,130

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ANALYSIS
As to claim 1, the Examiner finds that “Webler, Jr. discloses a stent
. . . comprising a coating having an adhesion polymer . . . in an amount
effective to cause the stent not to unintentionally dislodge from a catheter
balloon on which the stent is mounted” (Ans. 4). The Examiner notes that
“Weber fails to disclose wherein the adhesion polymer has a glass transition
temperature between about 25 °C and about 45 °C and is blended, combined,
mixed, conjugated or chemically bonded to a polymer of a coating for the
stent” (id.).
The Examiner finds that Chu teaches PEA-BZ and PEA-TEMPO
polymer coatings that may be used to coat a stent, wherein the polymers
have suitable biodegradation properties under varying conditions (id.). The
Examiner notes that the instant Specification teaches that the PEA-BZ and
PEA-TEMPO polymers have a glass transition temperature of 23 °C and
33 °C, respectively (id.).
The Examiner concludes that it would have been obvious to use the
PEA-BZ or PEA-TEMPO polymer coatings as taught by Chu as the
adhesion coating on the stent of Webler to “provide a suitable carrier
polymer that is advantageous for attachment and biodegrades slowly within
the body to prevent premature deployment of the stent from the balloon” (id.
at 4-5). The Examiner also cites DesNoyer
5
as evidence that “PEA-BZ and
PEA-TEMPO were known adhesion polymers” (id. at 14).
Appellant argues that the Examiner “has misconstrued Chu utterly”
(Response to Final Office Action dated August 27, 2009 (hereinafter

5
DesNoyer et al., US 7,166,680 B2, issued Jan. 23, 2007.
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Application 11/299,130

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“Response”) at 7). Chu, Appellant asserts, is directed to PEAs and PEAUs,
which are not mixed polymers (id.). Appellant further asserts that “there is
absolutely nothing in Chu to suggest that the polymers disclosed therein,
which do indeed include PEA-BZ and PEA-TEMPO as the examiner notes,
could or would act as „adhesion polymers,‟ i.e., as „glues‟ to bind stents to
balloons” (id.). According to Appellant, Chu teaches that the “polymers
may be used for „covalent immobilization (attachment) of various drugs and
other bioactive substances,‟” which has “nothing at all to do with adhering
one structure such as a stent to another structure such as a balloon” (id. at 7-
8).
Appellant‟s arguments are not convincing. Webler teaches retention
of a stent on a stent delivery member, wherein a plastic material is applied to
at least one of the stent and the stent delivery member (Webler, col. 2, ll. 24-
37). Webler also teaches that the plastic material used for adhesion may be a
polymer or copolymer (id. at col. 6, ll. 18-54).
Chu, as acknowledged by Appellant, teaches PEA polymers such as
PEA-BZ and PEA-TEMPO, which, as taught by the Specification (Spec. 6-
7), have a glass transition temperature between about 25 °C and about 45 °C.
While Chu does teach that the polymers may “be used as carriers for
covalent immobilization (attachment) of various drugs and other bioactive
substances” (Chu, col. 2, ll. 17-19), Chu also teaches that the modified
polymers can be used to coat stents to suppress restenosis (id. at col. 10, ll.
32-33), and DesNoyer provides evidence that PEA polymers or copolymers
with a low glass transition temperature (Tg) are useful for coating an
implantable device such as a drug-delivery stent (DesNoyer, col. 1, ll. 7-11).
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Application 11/299,130

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As noted by the Examiner (Ans. 14), DesNoyer teaches that low Tg materials
tend to be softer, and are thus more adhesive to balloons (DesNoyer, col. 1,
ll. 31-33), thus providing evidence that PEA polymers such as PEA-BZ and
PEA-TEMPO were known adhesion polymers.
Therefore, we agree with the Examiner that the combination of
Webler and Chu, as evidence by DesNoyer, renders the stent of claim 1
obvious.
Appellant also “question[s] the propriety of the examiner‟s invocation
of DesNoyer at this late stage of prosecution” (App. Br. 6). Appellant also
argues that even if prosecution were to be reopened and DesNoyer added to
the rejection, DesNoyer is not prior art as it was published on April 6, 2006,
which is four months after the filing date of the current application, which is
December 8, 2005 (id.). According to Appellant, the only part of DesNoyer
that would be common knowledge at the time of invention is the background
section, which teaches away from the use of low Tg polymers (id. (citing
DesNoyer, col. 1, ll. 21-33)).
If Appellant is of the opinion that the maintenance of the finality of
the last office action is in error, the proper remedy is by petition, not review
before the Board (see, e.g., 37 C.F.R. § 1.181). Moreover, Appellant has
had an opportunity to respond to the Examiner‟s citation of the DesNoyer
reference as evidence in the Appeal Brief (see App. Br. 6), and has chosen
not to file a Reply Brief.
As to whether DesNoyer is prior art, the instant application has a
filing date of December 8, 2005, whereas DesNoyer has a filing date of
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Application 11/299,130

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October 6, 2004, and thus qualifies as prior art under 35 U.S.C. § 102(e).
Thus, the whole disclosure of DesNoyer is available as prior art.
As to the rejection of claims 12 and 19 as being rendered obvious by
the combination of Webler and Chu as further combined with Tuch, as well
as the rejection of claims 5-7 and 21 as being rendered obvious by the
combination of Webler and Chu as further combined with Gregorich,
Appellant essentially reiterates the arguments made with respect to claim 1
(App. Br. 6-7). Those arguments are thus unavailing for the reasons set
forth above with respect to claim 1.

SUMMARY
The rejections of
claims 1, 2, 3, 8-11, 13-18, 20, 22, and 23 under 35 U.S.C. § 103(a) as
being rendered obvious by the combination of Webler and Chu;
claims 12 and 19 under 35 U.S.C. § 103(a) as being rendered obvious
by the combination of Webler and Chu as further combined with Tuch; and
claims 5-7 and 21 stand rejected under 35 U.S.C. § 103(a) as being
rendered obvious by the combination of Webler and Chu as further
combined with Gregorich;
are affirmed.

Appeal 2010-012094
Application 11/299,130

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TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).

AFFIRMED

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