Ex Parte Gellman

Patent Trial and Appeal Board

Jan 29, 2018

12628289 (P.T.A.B. Jan. 29, 2018)

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.
12/628,289 12/01/2009 Barry N. Gellman 8150BSC0022D2 5647
121974 7590 01/31/2018
K AC VINSKY DAISAK BLUNI PLLC
America's Cup Building
50 Doaks Lane
Marblehead, MA 01945
EXAMINER
PREBILIC, PAUL B
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
01/31/2018 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):
bbonneville @ kdbfirm .com
docketing @ kdbfirm. com
ndeane @ kdbfirm.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte BARRY N. GELLMAN
Appeal 2017-002446
Application 12/628,2891
Technology Center 1600
Before RICHARD M. LEBOVITZ, JOHN G. NEW,
RICHARD J. SMITH, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a ureteral stent configured to
move between a retracted configuration and an expanded configuration
along a longitudinal axis of the stent’s internal lumen. The Examiner
rejected the claims as unpatentable under 35 U.S.C. § 102 and 35 U.S.C.
§ 103. We have jurisdiction under 35 U.S.C. § 6(b). The rejections are
reversed.
1 The Appeal Brief (“Appeal Br.”) 2 lists Boston Scientific Scimed, Inc., as
the real-party-in-interest. The application specification is referred to as “the
Specification” (and “Spec.”) in this decision.
Appeal 2017-002446
Application 12/628,289
STATEMENT OF THE CASE
Claims 1, 3—9, 11, 13, 14, 17—19, 21—24, and 29-31 are pending and
stand rejected by the Examiner as follows:2
1. Claims 1, 3-9, 11, 13, 14, 17-19, 21, 22, 24, and 29-31 under pre-
AIA 35 U.S.C. § 102(b) and/or § 103(a) as anticipated by and/or obvious in
view of De La Torre (U.S. Pat. 5,554,189, iss. Sept. 10, 1996). Final Act. 2.
2. Claim 24 under pre-AIA 35 U.S.C. §103(a) as obvious in view of
De La Torre alone or, alternatively, further in view of McWeeney (U.S. Pat.
Appl. Publ. 2003/0199805 Al, publ. Oct. 23, 2003) or Pintauro (U.S. Pat.
5,782,916, iss. Jul. 21, 1998). Final Act. 2.
3. Claim 23 under pre-AIA 35 U.S.C. §103(a) as obvious in view of
De La Torre and Balbierz (U.S. Pat. 5,964,744, iss. Oct. 12, 1999). Final
Act. 2.
There are two independent claims on appeal, claims 1 and 22. Each
are directed to a ureteral stent. Claim 1, which is representative, is
reproduced below (underlining added to highlight the limitation in dispute):
1. A ureteral stent comprising:
a tube including a distal end and a proximal end, the tube
having an inner diameter and an outer diameter, the inner
diameter of the tube defining an internal lumen extending along
2 The Examiner stated in the Final Action (“Final Act.”) that the application
involved in this appeal is identified as a continuation or divisional of a prior-
filed application, but, in reference to claims 13 and 22, the Examiner found
that the application is a “continuation-in-part because this application
contains the subject matter not disclosed in the prior-filed application.”
Final Act. 2. The Examiner “required” Applicant to change the relationship
to a continuation-in-part application. Id. However, a rejection was not made
by the Examiner and thus this requirement is not reviewable by the PTAB
because it does not constitute a decision adverse to patentability or any other
jurisdictional duty of the PTAB under 35 U.S.C. § 6(b).
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Appeal 2017-002446
Application 12/628,289
a length of the tube, the tube being solid from the inner
diameter to the other diameter, the tube having a slit such that
the slit defines a spiral-shaped opening with a plurality of
rotations, the slit extending through the tube to the internal
lumen, the tube configured to move between a retracted
configuration and an expanded configuration along a
longitudinal axis of the internal lumen; and
a distal retention structure disposed at the distal end of
the tube for retention in a kidney, the distal retention structure
defining an internal lumen through a body of the distal retention
structure, the internal lumen of the distal retention structure
being in fluid communication with the internal lumen of the
tube, the internal lumen defined by the distal retention structure
having a portion that extends away from the longitudinal axis of
the internal lumen of the tube, the distal retention structure
having a curved shape when in a first configuration,
wherein the distal retention structure is configured to
receive a guide wire such that the guide wire extends through
the internal lumen of the distal retention structure when in a
second configuration different than the first configuration,
wherein the distal retention structure has most of its
curvature removed when in the second configuration.
Claim 22 has substantially the same limitation as highlighted above.
DISCUSSION
Each of the three rejections is based on the Examiner’s finding that De
La Torre describes a ureteral stent comprising all the recited structural
features of the claimed stent. Final Act. 3^4. The Examiner alternatively
stated the rejection under § 103 because De La Torre “does not explicitly
disclose a retention structure where most of the curvature is removed” when
in the second configuration (see last “wherein” clause of the claim). Id. at 4.
However, the Examiner found the structure is either met by De La Torre
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Application 12/628,289
because it would be capable of being deformed as claimed or at least
obvious to do so based on De La Torre alone. Id.
With respect to the requirement of claim 1 (and similarly in claim 22)
that the stent “move between a retracted configuration and an expanded
configuration along a longitudinal axis of the internal lumen,” the Examiner
found that the expanded configuration is shown in Figure 4 of De La Torre
when it is straightened by a rod and the retracted configuration is shown in
Figure 1 of De La Torre. Final Act. 4.
Appellant contends that the Examiner erred in making this
determination because, while De La Torre’s device is movable “between
bent and straightened configurations,” this “is not the same as movement
between expanded and retracted configurations” as recited in the claim.
Appeal Br. 14.
We begin with claim interpretation. During patent examination
proceedings, claim terms are given “the broadest reasonable meaning ... in
their ordinary usage as they would be understood by one of ordinary skill in
the art, taking into account whatever enlightenment by way of definitions or
otherwise that may be afforded by the written description contained in the
applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir.
1997).
The claim requires the stent to move between “retracted” and
“expanded” configurations. Appellant cited paragraphs 31 and 39 of the
Specification as describing this structural limitation. Appeal Br. 6. These
paragraphs, as well as paragraph 33, describe how the claimed slits in the
tube (“a slit such that the slit defines a spiral-shaped opening with a plurality
of rotations”) allow the tube to linearly expand between the expanded and
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Application 12/628,289
retracted positions. Figure 1A—IB of the Specification shows the expanded
position and Figures 2A—2B show the retracted positions, where the
retracted length is smaller than the expanded length. Spec. [1033] (page 7).
This description is consistent with the ordinary meaning of the claim terms,
e.g., where “expand” means to increase in size or to stretch or spread out.3
Thus, we interpret the requirement of the claim that the stent move between
a “retracted” and “expanded” configuration to mean that the stent length is
increased in size when it is expanded and decreased in length when
retracted.
We agree with Appellant that the ureteral prosthesis described by De
La Torre does not move between a “retracted” and “expanded” configuration
that changes in length as required by the rejected claims. The evidence
provided by Appellant supports the position that the prosthesis of De La
Torre was designed to prevent elongation and a consequent change in length.
Appeal Br. 14. De La Torre teaches:
It must be designed so that any possibility of spontaneous
displacement is prevented, which is guaranteed by an
undeformed configuration having preformed ends in the shape
of a hook or approximately J-shaped and a memory to recover
this undeformed configuration after deformation. To achieve
this an internal metallic wire is provided in the interior region
of the ureteral prosthesis, which is fastened to both ends of the
prosthesis so that any possibility of elastic elongation, which
could be provoked by opposed pulling motions, is avoided.
De La Torre, col. 1,11. 58—67.
The interior of the prosthesis which is being described is
provided with a very thin internal metallic wire, which
practically does not diminish the span of the prosthesis, which
is duly fastened, generally by welding, to both ends of the
3 http://www.dictionary.com/browse/expand (accessed Dec. 26, 2017).
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Application 12/628,289
prosthesis and to the last few end spires of the helicoid wire at
both ends. This prevents the elastic elongation of the prosthesis,
which could otherwise occur due to opposed pulling forces on
the prosthesis during a procedure.
Id. at col. 3,11. 54—61.
FIG. 2 is a detailed perspective view of an end or mouth the
ureteral prosthesis, showing the fastening of the internal wire
by welding on the three or four final turns which prevents the
elongation of the prosthesis.
Id. at col. 4,11. 33—36.
As these disclosures from De La Torre establish, the prosthesis
described in De La Torre contains an internal wire welded at both ends
which prevents the elongation of the prosthesis. In contrast, the claimed
stent is required to elongate when in the expanded configuration. De La
Torre’s prosthesis, however, has a structure which prevents it from
elongation.
The Examiner states:
bent and straightened configurations are merely other ways of
describing retracted and expanded configurations, respectively.
In light of the specification and the prior art, the Examiner
asserts that the Examiner's interpretation is merely another
reasonable way of interpreting the claims. In other words, the
claim language encompasses the bent and straightened
configurations disclosed by De La Torre.
Ans. 3.
However, the disclosure from the Specification, as discussed above,
supports the claim interpretation that the stent must be capable of
lengthening in size when “expanded”. De La Torre’s prosthesis lacks that
capability because of the internally welded wire. See disclosures from De
La Torre reproduced above. The Examiner did not adequately explain how
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Application 12/628,289
the claims, when read in light of the Specification, are reasonably interpreted
to cover De La Torre nor how straightening De La Torre’s prosthesis
involves expanding it in length when De La Torre expressly teaches
preventing elongation, namely getting longer in length.
For the foregoing reasons, we conclude that the Examiner did not
establish by a preponderance of the evidence that independent claims 1 and
22 are anticipated or obvious in view of De La Torre, alone, or in
combination with the additionally cited publications. Accordingly, the
rejections of claims 1 and 22, and dependent claims 3—9, 11, 13, 14, 17—19,
21, 23, 24, and 29—31, are reversed.
DECISION
The rejection of claims 1, 3—9, 11, 13, 14, 17—19, 21—24, and 29—31 is
reversed.
REVERSED
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