Ex Parte FurstDownload PDFPatent Trial and Appeal BoardMar 18, 201310810356 (P.T.A.B. Mar. 18, 2013) Copy Citation UNITED STATES PATENT AND TRADEMARKOFFICE 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. 10/810,356 03/26/2004 INV001Joseph G. Furst ICON 213110US03 1250 27885 7590 03/19/2013 FAY SHARPE LLP 1228 Euclid Avenue, 5th Floor The Halle Building Cleveland, OH 44115 EXAMINER BUI, VY Q ART UNIT PAPER NUMBER 3773 MAIL DATE DELIVERY MODE 03/19/2013 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 PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOSEPH G. FURST __________ Appeal 2011-012680 Application 10/810,356 Technology Center 3700 __________ Before TONI R. SCHEINER, DONALD E. ADAMS, and ERICA A. FRANKLIN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to an expandable intraluminal graft. The Patent Examiner rejected the claims as anticipated and/or obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse. STATEMENT OF THE CASE Claims 89, 90, 92, 93, 98, 100, 104-106,108 and 112, 113, 115-125, 127, 128, 130,131,133, 134, 139 and 140 are on appeal. Claim 89 is representative and reads as follows: Appeal 2011-012680 Application 10/810,356 2 89. An expandable intraluminal graft for use within a body passageway including a body member, a[n] intermediate compound, and biological agent, said intermediate compound, said at least one biological agent, and mixtures thereof coated on at least a portion of the body member, said body member having first and second ends and a wall surface disposed between said first and second ends defining a longitudinal axis of said body member, said body member having a first cross-sectional shape having a first cross-sectional area which permits intraluminal delivery of said body member into the body cavity, and a second expanded cross-sectional shape having a second cross-sectional area which is greater than said first cross-sectional area, said biological agent at least partially coated on or secured to the surface of said body member, said biological agent including two or more compounds selected from the group consisting of Trapidil, GM- CSF, Taxol, rapamycin, and mixtures thereof, said biological agent including Trapidil, said intermediate compound at least partially securing said biological agent to said body member, said intermediate compound at least partially encapsulating said biological agent in said intermediate compound, and combinations thereof. The Examiner rejected the claims as follows: • claims 89, 112, 124 and 127 under 35 U.S.C. § 102(e) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Hossainy;1 • claims 90, 92, 93, 98,100,104,2 105, 106,108, 115-123, 125, 128, and 139 under 35 U.S.C. § 103(a) as unpatentable over Hossainy and Machan;3 1 Patent No. US 6, 287,628 B1 issued to Syed F.A. Hossainy et al., Sep. 11, 2001. 2 Claim 104 is not listed in any of the rejections. However, both the Examiner and Appellant include dependent claim 104 among the list of claims that are rejected and pending in the application. (Ans. 2; App. Br. 2.) Claim 104 depends from claim 89 and further recites that the “biological Appeal 2011-012680 Application 10/810,356 3 • claims 89, 130 and 131 under 35 U.S.C. § 103(a) as unpatentable over Hossainy, Machan, and Schwartz;4 and • claims 133, 134 and 140 under 35 U.S.C. § 103(a) as unpatentable over Hossainy and Sirhan.5 ANTICIPATION/OBVIOUSNESS I. The Rejection Over Hossainy The Examiner’s position is that Hossainy disclosed a stent comprising pores or depots deposited with a therapeutic substance, such as trapidil (triazolopyrimidine) a well known cytostatic biological agent for inhibiting cell growth and division, and rinsed with a fluid comprising taxol to form a coating of taxol on the outer surface of the stent. (Ans. 4-5.) The Examiner also found that Hossainy disclosed a rinse fluid comprising biodegradable materials, such as DL-PLA, L-PLA, to form a polymeric coating impregnated with a therapeutic substance for controlling the release rate of the therapeutic substance. (Id. at 5.) agent is releasably coated on said body member,” which limitation is also recited in dependent claim 105 rejected over Hossainy and Machan. Thus, we understand claim 104 to have been inadvertently omitted from the list of claims rejected over Hossainy and Machan. We deem this error harmless and present the correct claim listing here for clarity. 3 Patent Application Publication No. US 2002/0065546 A1 by Lindsay S. Machan et al., published May 30, 2002. 4 Patent No. US 6, 368,658 B1 issued to Marlene Schwarz et al., Apr. 9, 2002. 5 Patent Application Publication No. US 2002/0082679 A1 by Motasim Sirhan et al., published Jun. 27, 2002. Appeal 2011-012680 Application 10/810,356 4 Alternatively, the Examiner concluded that it would have been obvious to one of ordinary skill in the art to have rinsed the stent in a solution of trapidil and the biodegradable polymer to form a coating on the stent comprising trapidil impregnated in the polymer. (Id.) Appellant acknowledges that Hossainy “discloses a stent that could include two different biological agents.” (Reply Br. 2.) However, Appellant contends, among other things, that Hossainy does not teach or suggest (a) an intermediate compound at least partially securing the biological agent to the body member of the stent, or (b) an “intermediate compound at least partially encapsulating said biological agent in said intermediate compound,” as required by claim 89. (Id.) Appellant asserts that the recited “biological agent” includes two or more compounds. (Id.) Thus, according to Appellant, the Examiner’s finding that Hossainy taught, or alternatively, suggested at least partially encapsulating one compound, i.e., taxol or trapidil, does not satisfy the claim requirement of an intermediate compound securing and/or encapsulating said biological agent, i.e., two or more of the recited compounds, on the stent. (Id.) We agree with Appellant. Independent claim 89 describes the “biological agent” as “including two or more compounds selected from the group consisting of Trapidil, GM-CSF, Taxol, rapamycin, and mixtures thereof, said biological agent including Trapidil.” (App. Br. 12, Claims App’x.) Thus, the claim term “biological agent” refers to a combination of at least two compounds. The Examiner’s rejection does not include a finding that Hossainy taught or suggested an intermediate compound at least partially (a) securing at least two compounds to said body member, or (b) encapsulating at least two compounds in said intermediate compound. Appeal 2011-012680 Application 10/810,356 5 Rather, the Examiner found that Hossainy taught or suggested an intermediate compound partially encapsulating taxol or trapidil. (Ans. 5, 8- 9.) Consequently, the Examiner did not find that the prior art set forth each element in the claim. See Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631 (Fed. Cir. 1987). Nor did the Examiner properly determine the differences between the claimed subject matter and the prior art. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). Accordingly, we reverse the rejection of claims 89, 112, 124 and 127 under 35 U.S.C. § 102(e) as being anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as unpatentable over Hossainy. II. The Rejections Over Combinations Including Hossainy The Examiner’s obviousness rejections over combinations including Hossainy each rely on Hossainy as teaching or suggesting the limitations of independent claim 89. (Ans. 6-7.) Accordingly, we reverse these obviousness rejections for the same reasons discussed regarding the obviousness rejection of claims 89, 112, 124 and 127. SUMMARY We reverse each of the Examiner’s rejections. REVERSED dm Copy with citationCopy as parenthetical citation