Ex Parte Gale et al

Patent Trial and Appeal Board

Nov 21, 2017

13112960 (P.T.A.B. Nov. 21, 2017)

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.
13/112,960 05/20/2011 David C. Gale 062571.00546 8566
45159 7590
SQUIRE PB (Abbott)
275 BATTERY STREET, SUITE 2600
SAN FRANCISCO, CA 94111-3356
EXAMINER
KOEHLER, CHRISTOPHER M
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
11/24/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
sfripdocket @ squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID C. GALE, BIN HUANG,
ANTHONY J. ABBATE, TIMOTHY A. LIMON, and
KLAUS KLEINE
Appeal 2016-004588
Application 13/112,960
Technology Center 3700
Before JENNIFER D. BAHR, ARTHUR M. PESLAK, and
SEAN P. O’HANLON, Administrative Patent Judges.
PESLAK, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David C. Gale et al. (“Appellants”) appeal under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1—4, 6-9, 12-17, and 19.1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
1 Appellants submit the real party in interest is Abbott Cardiovascular
Systems, Inc. Appeal Br. 1.
Appeal 2016-004588
Application 13/112,960
THE CLAIMED SUBJECT MATTER
Claim 1, reproduced below with italics added, is representative of the
claimed subject matter.
1. A stent having a stent pattern comprising:
a plurality of cylindrical rings, each ring including a
plurality of diamond-shaped closed cells; and
a plurality of linear bar arms parallel with a longitudinal
axis of the stent and connecting adjacent rings of the plurality of
cylindrical rings,
wherein the closed cells include in sequence a first closed
cell, a second closed cell immediately following and joined to
the first closed cell, a third closed cell immediately following and
joined to the second closed cell, and a fourth closed cell
immediately following and joined to the third closed cell, each
closed cell includes two apices and has a total of four bar arms,
the four bar arms in sequence are a first bar arm, a second bar
arm immediately following and joined to the first bar arm, a third
bar arm immediately following and joined to the second bar arm,
and a fourth bar arm immediately following and joined to the
third bar arm,
wherein in each closed cell, an end of the first bar arm and
an end of the second bar arm meet to form a first apex of the two
apices, and an end of the third bar arm and an end of the fourth
bar arm meet to form a second apex of the two apices,
wherein in each of the rings a first intersection is formed
where the second apex of the first closed cell meets the first apex
of the second closed cell, a second intersection is formed where
the second apex of the second closed cell meets the first apex of
the third closed cell, a third intersection is formed where the
second apex of the third closed cell meets the first apex of the
fourth closed cell,
wherein the second apex of the first closed cell has a
longitudinal position that is the same as that of the first apex of
the second closed cell, the second apex of the second closed cell
has a longitudinal position that is the same as that of the first
apex of the third closed cell, and the second apex of the third
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Application 13/112,960
closed cell has a longitudinal position that is the same as that of
the first apex of the fourth closed cell,
wherein in each of the rings, the first intersection has one
of the linear bar arms joining it to one of the intersections of a
proximally adjacent ring, the second intersection has no linear
bar arm joining it to the proximally adjacent ring, and the third
intersection has another one of the linear bar arms joining it to
another one of the intersections of the proximally adjacent ring.
REJECTIONS
1) Claims 1, 6-9, 12, 15-17, and 19 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Kitaoka (US 2004/0127972 Al,
published July 1, 2004) and Das (US 2005/0004656 Al, published
Jan. 6, 2005).
2) Claims 2^1 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Kitaoka, Das, and Davila (US 2002/0111590 Al, published
Aug. 15,2002).
3) Claims 13 and 14 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Kitaoka, Das, and Stanford (US 2004/0088041
Al, published May 6, 2004).
DISCUSSION
Rejection 1
The Examiner finds that Kitaoka discloses a stent pattern
incorporating most of the limitations of claim 1 except Kitaoka’s third
intersection does not have a linear bar arm joining it to the proximally
adjacent ring, and the apices of Kitaoka’s closed cells in each ring are not
aligned at the same longitudinal position. Final Act. 3-5. The Examiner
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Application 13/112,960
finds that Das discloses a stent pattern wherein “the first intersection has one
of the linear bar arms joining it to the proximally adjacent ring . . the
second intersection has no linear bar arm . . and the third intersection has
another one of the linear bar arms” and the apices of the closed cells are
aligned at the same longitudinal position. Id. at 6 (citing Das Fig. 6A). The
Examiner reasons that it would have been obvious to modify Kitaoka to
incorporate the placement of linear bar arms “in an every other intersection
configuration, as taught by Das” because “one of ordinary skill in the art
would readily recognize that the number of linear bar arms would directly
affect the degree of flexibility of the stent and should be selected based on
the intended application.” Id. at 7. The Examiner then concludes that it
would have been obvious to further modify Kitaoka by providing
the joints of Kitaoka along the same longitudinal position about
the circumference of the ring as taught by Das, since: (a) Das
teaches that providing the same longitudinal position about the
circumference of the ring is known in the art at the time of the
invention; (b) Kitaoka teaches that the staggered distance (L, 3)
is relatively small (0.2 mm, para. [0057]); (c) the primary
concern with respect to the joints 3 of Kitaoka is their
orientation along the axis to provide proper expansion of the
cells (para. [0042]); and (d) that the exact shape of the cells of
Kitaoka is a design variable (para. [0044]) such that one [of]
ordinary skill in the art could alter the exact cell/ring design
without seriously departing from the objectives of Kitaoka.
Id.
Appellants do not dispute that it would be obvious to modify Kitaoka
based on Das to incorporate linear bar arms at every other intersection of
apices. Appeal Br. 4-10. Appellants also do not dispute the finding that
Das discloses the alignment of apices of the closed cells at the same
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Application 13/112,960
longitudinal position around the circumference of the ring as stated in item
(a) of the Examiner’s conclusion. Reply Br. 3.
Appellants’ sole contention of error is that Kitaoka teaches away from
“the Examiner’s proposed modification to remove misalignment of joints”
from Kitaoka’s stent pattern. Appeal Br. 6. In support of this contention,
Appellants argue that the embodiments disclosed in Kitaoka all disclose
misaligned joints. Id. Appellants argue that paragraph 11 of Kitaoka
discloses that misalignment of joints “enables a stent to be compressed to a
smaller diameter as compared to other stents” such as Das. Id. at 8.
Appellants next argue that paragraph 13 of Kitaoka “describes the
intentional misalignment of the joints of annular elements.” Id. According
to Appellants, paragraph 14 of Kitaoka “indicates that the misalignment of
joints ... is substantially parallel to the axial direction of the stent, ‘so that
the length of the joints does not hamper the compression of the stent.’” Id.
Appellants equate “the length of the joints” referred to in paragraph 14 to the
length “L” illustrated in Figure 6 of Kitaoka. Id. For the following reasons,
we sustain the rejection of claim 1.
When a prior art reference discloses a different solution to a similar
problem, it does not teach away from the claimed subject matter unless the
prior art reference also criticizes, discredits or otherwise discourages the
solution claimed. See Crocs, Inc. v. U.S. International Trade Commission,
598 F.3d 1294, 1308 (Fed. Cir. 2010) (Prior art taught away by specifically
discouraging use of foam straps); In re Fulton, 391 F.3d 1195, 1201 (Fed.
Cir. 2004) (“the prior art disclose[s] a number of alternative shoe sole
designs but do not teach that hexagonal projections in a facing orientation
are undesirable and, therefore do not teach away”) (emphasis added). With
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respect to paragraph 11 of Kitaoka, this paragraph does not discuss joints, or
the longitudinal alignment or misalignment of joints, as Appellants assert.
Rather, it discusses a stent wherein the annular elements “extend in
directions orthogonal to the stent axis.” Kitaoka ^ 11. Paragraph 13 of
Kitaoka uses the term “zigzag” to describe the configuration of joints, which
Appellants characterize as the “intentional misalignment of joints of the
annular elements.” See Appeal Br. 8. However, there is no criticism of
aligned joints in paragraph 13 such as disclosed in Das, nor is there any
disclosure of reasons that aligned joints are undesirable. See Kitaoka ^ 13.
Next, Appellants argue that the statement in paragraph 14 of Kitaoka
that “the length of the joints does not hamper the compression of the stent”
refers to “misalignment of joints” and such misalignment equates to the
distance L in Kitaoka’s Figure 6. Appeal Br. 8. However, we note that
paragraph 42 of Kitaoka explains that joints 3 are “short” and “remain
unchanged upon expansion of the stent 1” making “it [] easy for the
expanding force to be exerted on the center of each annular element 2, and
each annular element 2 can be expanded (deformed) uniformly.” Kitaoka
^ 42. We, therefore, disagree with Appellants that paragraph 14 of Kitaoka
refers to misalignment of joints but, rather, it is describing the actual length
of joints 3 and the effect of “short” joints as explained in paragraph 42. We,
therefore, determine that none of the disclosure in Kitaoka relied on by
Appellants in any way criticizes, discredits, or discourages the use of aligned
joints as disclosed in Das. Although we agree that Kitaoka discloses
misaligned joints in its various embodiments, such a disclosure of an
alternate design, without more, is insufficient to establish that Kitaoka
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Application 13/112,960
teaches away from the Examiner’s proposed combination of Kitaoka and
Das. In re Fulton, 391 F.3d at 1201.
As Appellants do not apprise us of Examiner error, we sustain the
rejection of claim 1. Appellants do not offer separate argument for the
patentability of dependent claims 6-9, 12, 15-17, and 19. Appeal Br. 10.
We sustain the rejection of these claims for the same reasons as claim 1.
Rejections 2 and 3
Claims 2—4, 13, and 14 depend from claim 1. Appeal Br. (Claims
App.). Appellants argue these claims are patentable for the same reasons as
claim 1. Appeal Br. 10. We sustain the rejection of these claims for the
same reasons as claim 1.
DECISION
The Examiner’s decision rejecting claims 1—4, 6-9, 12-17, and 19 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). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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