Ex Parte Fariabi

Board of Patent Appeals and Interferences

Oct 6, 2009

10449499 (B.P.A.I. Oct. 6, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte SEPEHR FARIABI
____________

Appeal 2009-005837
Application 10/449,499
Technology Center 1700
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Decided: October 07, 2009
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Before EDWARD C. KIMLIN, TERRY J. OWENS, and
PETER F. KRATZ, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-31. We have
jurisdiction under 35 U.S.C. § 6(b).

Appeal 2009-005837
Application 10/449,499

Claim 1 is illustrative:

1. A method for making a stent, comprising:

forming cylindrical elements with undulating components from an
alloy material containing cobalt, chromium and at least 2 weight percent of
nickel, the cylindrical elements generally aligned along a common
longitudinal axis and interconnected;

electrochemically polishing the cylindrical elements, thereby forming
a stent, the stent being plastically deformable to expand from a first diameter
to a second larger diameter suitable for holding open a blood vessel.

The Examiner relies upon the following references as evidence of
obviousness (Ans. 2-3):
Prosen 2,674,571 Apr. 06, 1954
Hignett 3,145,124 Aug. 18, 1964
Weisman 3,713,175 Jan. 30, 1973
Smith 4,214,693 Jul. 29, 1980
Palmaz 4,733,665 Mar. 29, 1988
Gianturco 0 282 175 A1 Aug. 14, 1988

Appellant’s claimed invention is directed to a method for making a
stent by forming cylindrical elements with undulating components from an
alloy material. The alloy contains cobalt, chromium and nickel. The
cylindrical elements undergo electrochemical polishing during formation of
the stent.
The appealed claims stand rejected under 35 U.S.C. § 103(a) as
follows:
(a) claims 1 and 11-31 over Palmaz in view of Weisman and
Prosen,
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Appeal 2009-005837
Application 10/449,499

(b) claims 2 and 5-10 over Palmaz in view of Weisman and
Prosen further in view of Smith,
(c) claims 3 and 4 over Palmaz in view of Weisman, Prosen,
Smith and Hignett, and
(d) claim 1 over Gianturco in view of Weisman and Prosen.
Appellant does not separately argue any particular claim on appeal.
Accordingly, the groups of claims separately rejected by the Examiner stand
or fall together.
We have thoroughly reviewed each of Appellant’s arguments for
patentability. However, we are in complete agreement with the Examiner
that the claimed subject matter would have been obvious to one of ordinary
skill in the art within the meaning of § 103 in view of the applied prior art.
Accordingly, we will sustain the Examiner’s rejection for essentially those
reasons expressed in the Answer.
Appellant does not dispute the Examiner’s factual determination that
both Palmaz and Gianturco, the primary references, disclose a method for
making a stent comprising forming cylindrical elements with undulating
components from a material that is compatible with the human body. As
acknowledged by the Examiner, neither of the primary references discloses
the claimed alloy as the material for forming the stent. However, the
Examiner cites Weisman for teaching the claimed alloy for making a
prosthetic device that is non-reactive with chemicals found within the human
body and is also non-thrombotic. Significantly, Appellant makes no
argument against the Examiner’s legal conclusion that it would have been
obvious for one of ordinary skill in the art to use the alloy of Weisman in
making the stents of Palmaz and Gianturco.
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Appeal 2009-005837
Application 10/449,499

Palmaz does not teach electrochemically polishing the cylindrical
elements, and the Examiner relies upon Prosen as evidence for the
obviousness of electrochemically polishing alloys of cobalt and chromium,
as well as nickel. Appellant contends, however, that Weisman teaches
against electrochemically polishing the claimed alloys. Appellant cites
Weisman’s teaching that it is preferable to remove substantially all oxide
from the surface of a prosthetic device, which Appellant characterizes as a
teaching away from the claimed electrochemically polishing step that is
performed to promote the formation of a protective oxide layer. However,
as pointed out by the Examiner, Appellant’s argument is not germane to the
claimed subject matter inasmuch as the appealed claims fail to recite that the
electrochemically polishing step produces an oxide layer on the surface of
the stent material. Furthermore, the Examiner points out that the production
of an oxide layer by electrochemically polishing is not described in
Appellant’s Specification. Consequently, since Appellant has not refuted the
Examiner’s factual finding that “[i]t is well known that electropolishing does
not necessarily produce an oxide layer, as it depends on bath constituents,
voltage applied and post-processing atmospheric exposure” (Ans. 9, last
sentence), Appellant’s argument that Weisman teaches away from
electrochemically polishing the claimed alloy is without merit.
As for Appellant’s argument that Prosen does not teach
electrochemically polishing a nickel-cobalt-chromium alloy, we concur with
the Examiner that Prosen’s electrochemically polishing of high-
cobalt/chromium and high-nickel/chromium alloys would have suggested
electrochemically polishing alloys within the scope of the appealed claims.
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Appeal 2009-005837
Application 10/449,499

We note that Appellant does not advance separate, substantive
arguments against the rejection of claims 2 and 5-10 over the additional
citation of Smith, and the rejection of claims 3 and 4 over the additional
citation of Hignett.
As a final point, we note that Appellant bases no argument upon
objective evidence of non-obviousness, such as unexpected obviousness.
In conclusion, based on the foregoing and the reasons well stated by
the Examiner, the Examiner’s decision rejecting the appealed claims is
affirmed.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a) (2008).

AFFIRMED

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