Ex Parte Gellman

Board of Patent Appeals and Interferences

Mar 5, 2012

10100993 (B.P.A.I. Mar. 5, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BARRY N. GELLMAN
____________

Appeal 2010-001137
Application 10/100,993
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
WILLIAM V. SAINDON, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Barry N. Gellman (Appellant) seeks our review under 35 U.S.C. § 134
of the Examiner’s decision rejecting claims 1, 4, 10, 12, 14, 16-18, 23, 27,
31-35, 37-39, 41, 42, and 45-62 under 35 U.S.C. § 103(a) as unpatentable
over Norton (US 4,531,933; iss. Jul. 30, 1985), Galloway (US 4,738,667;
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iss. Apr. 19, 1988), and Jayaraman (US 2002/0010481 A1; pub. Jan. 24,
2002). We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellant’s claimed invention is directed to “a ureteral stent having a
retention element adapted to accommodate both ureter lengthening and
shortening, while reducing patient discomfort and inhibiting stent
migration.” Spec. 8, para. [0034]. Claim 1, reproduced below, is
representative of the subject matter on appeal.
1. A ureteral stent comprising,
an elongate body having a first end and a second end and
defining an internal lumen extending there between, the
elongate body having a length at least sufficient to extend
through a ureter of a patient such that the first end is configured
to be disposed in a bladder of the patient and the second end is
configured to be disposed in a kidney of the patient;
a first retention element incorporated with the first end of
the elongate body, the first retention element having a plurality
of coils coiling toward the second end of the elongate body
around a first section of the elongate body, each of the coils
from the plurality of coils coiling around the elongate body at
varying distances from the first section of the elongate body
and having a diameter, the diameter of each coil from the
plurality of coils increasing as the plurality of coils extends
from the first end toward the second end of the elongate body
such that a first coil from the plurality of coils having a greater
diameter than the remaining coils contacts a bladder wall of the
patient when the first end of the elongate body is disposed in
the bladder; and
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a second coil from the plurality of coils having a
diameter smaller than the remaining coils is configured to pass
through at least another coil from the plurality of coils different
than the first coil when at least a portion of the first section of
the elongate body is moved toward the kidney during ureter
lengthening when the first end of the elongate body is disposed
in the bladder.
ISSUE
The issue presented by this appeal is whether the Examiner articulated
adequate reasoning based on rational underpinnings to explain why one of
ordinary skill in the art would have been led to modify the ureteral stent of
Norton with the teachings of Galloway and Jayaraman to result in the
claimed invention.
PRINCIPAL OF LAW
When there is a design need or market pressure to solve a
problem and there are a finite number of identified, predictable
solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp. If this leads
to the anticipated success, it is likely the product not of
innovation but of ordinary skill and common sense. In that
instance the fact that a combination was obvious to try might
show that it was obvious under § 103.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007).
ANALYSIS
Independent claim 1 calls for a ureteral stent comprising an elongate
body and a retention element having a plurality of coils “coiling toward the
second end of the elongate body and around a first section of the elongate
body, . . . the diameter of each coil from the plurality of coils increasing as
the plurality of coils extends from the first end toward the second end of the
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elongate body.” Independent claims 18 and 41 similarly call for coils
coiling around a first portion of the elongate body and the first coil at the
first end of the elongate body having a smaller diameter than a diameter of
the remaining coils.
Norton discloses a helical coil ureteral stent which prevents migration
of the device and provides a non-traumatic spring effect when the patient is
active. Col. 1, ll. 56-59. Norton discloses that its stent “need only be
provided in one length for each French size (diameter)” due to the “helical
coil configuration on the distal or bladder end of the stent.” Col. 1, ll. 60-62
and col. 2, ll. 47-49 (“a length of 31 centimeters has been found ideal”).
Thus, Norton discloses a ureteral stent which, according to Norton, avoids
migration and can accommodate ureteral lengths of from 11 centimeters to
30 centimeters. Col. 3, ll. 13-15 and 21-23. Norton does not acknowledge
any apparent shortcomings in its stent device, such as kidney or bladder
irritation or patient discomfort. As acknowledged by the Examiner (Ans. 3),
the coils on the ends of Norton’s stent do not coil around the elongate body
and the diameters of the coils do not increase as the coils extend from the
first end toward the second end of the elongate body. Norton, figs. 1-5. As
such, it was necessary for the Examiner to articulate a reason why one of
ordinary skill in the art would have been led to modify the coils of Norton to
meet the claimed invention. KSR, 550 U.S. at 418 (an analysis of the reason
to combine the known elements in the fashion claimed should be made
explicit). The Examiner’s rationale is based on a determination that the
required modifications to Norton would have been obvious to try as a matter
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of ordinary skill. Ans. 4 (“There are a limited number of identifiable and
predictable solutions in the prior art for the shape and point of connection of
a coiled structure which anchors an elongate body such as in the Norton et
al. device. One would be motivated to combine these limited options where
the combination requires only ordinary skill.”).
The Examiner’s rejection fails for two reasons. First, the Examiner
has not adequately shown that at the time of Appellant’s invention there was
an art-recognized design need or market pressure to solve a problem. The
ureteral stent disclosed in Norton appears to satisfactorily solve the problem
of preventing stent migration and accommodating a range of ureteral sizes.
The Examiner has not articulated adequate reasoning to explain why one of
ordinary skill in the art would have been led to look beyond the ureteral stent
disclosed in Norton. Second, the Examiner has not adequately shown the
existence of a finite number of identified, predictable solutions. While the
Examiner points to the coil designs disclosed in Galloway and Jayaraman as
variants of the coil used in Norton, the Examiner has not adequately shown
that these variants would have been among a finite number of coil designs
available to one of ordinary skill in the art. As such, we agree with
Appellant (Br. 13-14) that the Examiner’s proposed modification of
Norton’s device with the coils of Galloway and Jayaraman is the result of
impermissible hindsight.
CONCLUSION
The Examiner did not articulate adequate reasoning based on rational
underpinnings to explain why one of ordinary skill in the art would have
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been led to modify the ureteral stent of Norton with the teachings of
Galloway and Jayaraman to result in the claimed invention.
DECISION
We REVERSE the decision of the Examiner to reject claims 1, 4, 10,
12, 14, 16-18, 23, 27, 31-35, 37-39, 41, 42, and 45-62.

REVERSED

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