Ex Parte Dorn

Board of Patent Appeals and Interferences

Jan 9, 2012

10552886 (B.P.A.I. Jan. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte JURGEN DORN
____________

Appeal 2010-007240
Application 10/552,886
Technology Center 3700
____________

Before DONALD E. ADAMS, JEFFREY N. FREDMAN, and
ERICA A. FRANKLIN, Administrative Patent Judges.

ADAMS, Administrative Patent Judge.

DECISION ON APPEAL
This appeal under 35 U.S.C. § 134 involves claims 1-32, the only
claims pending in this application (App. Br. 3). We have jurisdiction under
35 U.S.C. § 6(b).
STATEMENT OF THE CASE
The claims are directed to a method of loading a self-expanding stent
into a delivery sheath (1, 2, 19, 20, and 19-27); a delivery system (claims 3-
18 and 22-27); and a method of deploying a stent (claims 28-32).
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Application 10/552,886

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Claims 1-19 and 21-32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Sullivan.
1

Claim 20 stands rejected under 35 U.S.C. § 103(a) as unpatentable
over the combination of Sullivan and Grosjean.
2

We affirm the rejection of claims 28-32 and reverse all other grounds
of rejection.

The rejection over Sullivan:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?

FACTUAL FINDINGS (FF)
FF 1. For clarity, we reproduce Appellant’s Fig. 3 below:

“Fig. 3 is an axial diametral section through the distal tip of . . .
[Appellants’] stent delivery system” (Spec. 6).
FF 2. As illustrated in Appellant’s Fig. 3, a stent body 20 is confined
within an outer sheath 10 (FF 1; Spec. 7).

1
Sullivan et al., US 6,607,551 B1, issued August 19, 2003.
2
Grosjean et al., US 5,619,878, issued April 15, 1997.
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FF 3. “[T]he inner layer [or covering] 24 lies radially within the luminal
envelop of the stent body 20 except where it protrudes radially outwardly
into the stent body apertures 26” (Spec. 7).
FF 4. The term “envelope” “indicate[s] the generalized surfaces of the
luminal and abluminal major wall surfaces of the stent body” (id.).
FF 5. “[T]he outer layer 22 lies outside the abluminal envelope stent body
20, except where it protrudes into the apertures 26 for fusing with the inner
layer” 24 (id.).
FF 6. “The inner catheter 40 defines a guidewire lumen 42” (id. at 8).
FF 7. “The inner catheter has an abluminal surface 44 which carries on it a
wire 46 arranged as a helix so as to provide a plurality of protrusions . . . on
the abluminal surface 44” (id.).
FF 8. “[W]hen the stent body is radially inwardly compressed down onto
the inner catheter 40, the inner . . . layer 24 deforms to accommodate the
protrusions 48, but the protrusions 48 do not reach radially outward as far as
the luminal envelope of the stent body 20” (id.).
FF 9. We adopt the Examiner’s findings concerning the scope and content
of the prior art (Ans. 3-7) and add/repeat the following for emphasis.
FF 10. The Examiner finds that “Sullivan does not speak directly to the
issue of compressing the stent radially inwardly such that the protrusions
deform the covering material but do not reach radially outwardly as far as
the luminal envelope” (id. at 3).
FF 11. The Examiner finds that the protrusions or protuberances of
Sullivan’s stent pusher are “in frictional engagement with the inner
periphery of the stent” “and/or may be in the form of protrusions that
penetrate into the open space . . . between elements . . . [that define the wall
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Application 10/552,886

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of Sullivan’] stent” (Ans. 4; Sullivan, col. 6, ll. 3-7; see also Sullivan, col. 5,
ll. 44-48; see also App. Br. 11 (wherein Appellant discusses the interaction
of Sullivan’s stent pusher with the stent in terms of frictional and mechanical
engagement).
FF 12. Sullivan defines the term “stent” to refer to both covered and
uncovered stents (Sullivan, col. 1, ll. 26-27; Ans. 8).
FF 13. The Examiner finds that “[b]y compressing the stent graft . . . onto
the protrusions [of Sullivan’s stent pusher] . . ., the protrusions . . . inherently
deform the covering material” (Ans. 4).

ANALYSIS
Based on Sullivan the Examiner concludes that
It would have been obvious to one of ordinary skill in the art at
the time of the invention to compress the stent such that the
protrusions do not extend outwardly through the covering layer
into the luminal envelope in order to prevent damage to the
stent since Sullivan teaches that frictional engagement alone is
sufficient to retain the stent.

(Ans. 4.)
Appellant’s independent claims 1, 3, 10, and 19 require, inter alia, the
protrusions to deform the covering material but not:
(1) reach radially outwardly as far as the luminal envelop (claims 1
and 3); or
(2) intersect a plane along the luminal wall surface (claims 10 and 19).
As the Examiner recognizes, Sullivan suggests frictional engagement of the
protrusions “with the inner periphery of the stent” (FF 11). Therefore,
Sullivan’s protrusions (1) reach radially outwardly as far as the luminal
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envelop and (2) intersect a plane along the luminal wall surface of the stent.
The same is true of the mechanical engagement of Sullivan’s protrusions
with a stent (FF 11). We recognize the Examiner’s conclusion that “[i]t
would have been obvious to one of ordinary skill in the art to size the
protrusions such that they do not extend entirely through the inner covering
layer to the metal framework of the stent in order to reduce structural
damage to the covered stent” (Ans. 9). The Examiner, however, fails to
provide an evidentiary basis in Sullivan to support this conclusion. As
Appellant explains “[t]his proposed modification by the Examiner is against
the teachings of Sullivan,” which requires the stent pusher to be “in
frictional engagement with the inner periphery of the stent” (Reply Br. 6; Cf.
FF 11).
Appellant’s independent claim 28 stands on a different footing. Claim
28 requires the protrusions to extend into the covering. Unlike claims 1, 3,
10, and 19, and their dependents, there is no limitation in claim 28 regarding
the extension of the protrusions as far as the luminal envelop or their
intersection with a plane along the luminal wall surface of the stent.
Sullivan refers to both covered and uncovered stents (FF 12).
Therefore, we are not persuaded by Appellant’s contention that Sullivan fails
to suggest covered stents (App. Br. 8-9; Reply Br. 4-5). Appellant fails to
provide persuasive evidence or argument to support a conclusion that the
frictional or mechanical engagement of Sullivan’s protuberances with the
inner periphery of the stent fails to suggest outwardly extending protrusions
that extend into the covering as required by Appellant’s claim 28 (see FF
11).

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CONCLUSION OF LAW
The preponderance of evidence on this record supports a conclusion
of obviousness with respect to claim 28. The rejection of claim 28 under 35
U.S.C. § 103(a) as unpatentable over Sullivan is affirmed. Because they are
not separately argued claims 29-32 fall together with claim 28. 37 C.F.R.
§ 41.37(c)(1)(vii).
The preponderance of evidence on this record fails to support a
conclusion of obviousness with respect to claims 1-19 and 21-27. The
rejection of claims 1-19 and 21-27 under 35 U.S.C. § 103(a) as unpatentable
over Sullivan is reversed.

The rejection over the combination of Sullivan and Grosjean:
ISSUE
Does the preponderance of evidence on this record support a
conclusion of obviousness?

FACTUAL FINDINGS (FF)
FF 14. We adopt the Examiner’s findings concerning the scope and content
of the prior art (Ans. 7).

ANALYSIS
Claim 20 depends from claim 1. The Examiner fails to establish that
Grosjean, relied upon for the suggestion that it was obvious to withdraw an
inner element having a helical protrusion from a complimentary tabular
element by unscrewing it, makes up Sullivan’s failure to suggest the
elements of claim 1 as set forth above.
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CONCLUSION OF LAW
The preponderance of evidence on this record fails to support a
conclusion of obviousness. The rejection of claim 20 under 35 U.S.C.
§ 103(a) as unpatentable over the combination of Sullivan and Grosjean is
reversed.

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-IN-PART

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