Ex Parte Hemerick et al

Board of Patent Appeals and Interferences

Jun 28, 2012

11319136 (B.P.A.I. Jun. 28, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte JAMES F. HEMERICK and ERIC SCHNEIDER
__________

Appeal 2011-001494
Application 11/319,136
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, 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
systems for delivering a stent into an anatomical structure. The Patent
Examiner rejected the claims as obvious. We have jurisdiction under
35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
Claims 47-53, 55-56, 59, 61, 63, 65, 67-68, 70-71 and 75-90 are on
appeal. Claims 47, 65, and 90 are representative and read as follows:
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47. A system for delivering a stent into an anatomical structure, the
system comprising:
an outer tubular structure having a proximal end, a distal end, an inner
surface defining an outer lumen, and an outer surface;
an inner elongated structure having a proximal end, a distal end, and
an inner surface defining an inner lumen, the inner elongated structure being
disposed inside the outer lumen; and
a plurality of contact areas projecting radially outward from the inner
elongated structure and arranged sequentially along a length of the inner
elongated structure,
wherein each of the contact areas is spaced apart from an adjacent
contact area by an exposed outer surface of the inner elongated structure,
wherein the plurality of contact areas increase in flexibility from the
proximal end of the inner elongated structure to the distal end of the inner
elongated structure,
wherein the plurality of contact areas are positioned proximal of the
stent.

65. A system for delivering a stent into an anatomical structure, the
system comprising:
an outer tubular structure having a proximal end, a distal end, and an
inner surface defining a lumen, wherein the outer tubular structure has a
translucent region at the distal end, the translucent region having a length
less than a length of the stent;
an inner elongated structure having a proximal end and a distal end,
the inner elongated structure being located within the outer tubular structure;
a stent accommodating area on the distal end of the inner elongated
structure, the stent accommodating area accommodating the stent; and
a contact area projecting from the inner elongated structure and located
proximal of the stent accommodating area, wherein the contact area is
configured to minimize friction,
wherein the translucent region is coextensive with at least a portion of
the stent accommodating area,
wherein the outer tubular structure has a substantially constant
diameter between the proximal end and the distal end.

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90. A system for delivering a stent into an anatomical structure, the
system comprising:
an outer tubular structure having a proximal end, a distal end, and an
inner surface defining a lumen, wherein the outer tubular structure has a
translucent region at the distal end, the translucent region having a length
less than a length of the stent;
an inner elongated structure having a proximal end and a distal end,
the inner elongated structure being located within the outer tubular structure;
a stent accommodating area on the distal end of the inner elongated
structure, the stent accommodating area accommodating the stent; and
a contact area projecting from the inner elongated structure and
located closer to a proximal end of the stent accommodating area than a
distal end of the stent accommodating area, wherein the contact area is
configured to minimize friction,
wherein the translucent region is coextensive with at least a portion of
the stent accommodating area,
wherein the outer tubular structure has a substantially constant
diameter between the proximal end and the distal end,
wherein the contact area includes three discrete contact areas, and
each of the three discrete contact areas is disposed proximally of the stent.

The Examiner rejected the claims as follows:
• claims 47, 50, 52-53, 55-56, 59, 61, 63, 77-79, 82-84 and 87-88
under 35 U.S.C. § 103(a) as unpatentable over Ravenscroft,
1
Lowery,
2
and
Stevens;
3
and
• claims 48-49, 51, 65, 67-68, 70-71, 75-76, 80-81, 85-86 and 89-90
under 35 U.S.C. § 103(a) as unpatentable over Ravenscroft, Lowery,
Stevens, and Bartholf.
4

1
US Patent No. 5,702,418 issued to Adrian C. Ravenscroft, Dec. 30, 1997.
2
US Patent No. 5,300,023 issued to Guy R. Lowery et al., Apr. 5, 1994.
3
US Patent No. 5,599,319 issued to Robert C. Stevens, Feb. 4, 1997.
4
Patent Application Publication No. US 2001/0034549 A1 by Heather A.
Bartholf et al., published Oct. 25, 2001.
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OBVIOUSNESS
I. The Rejection of Claims 47, 50, 52-53, 55-56, 59, 61, 63, 77-79, 82-84
and 87-88.
Regarding independent claim 47, the Examiner’s position is that
Ravenscroft disclosed a system for delivering a stent as claimed, except for a
plurality of contact areas projecting radially outward from the inner elongate
structure. (Ans. 4.) The Examiner found that Lowery taught that it was
“well known in the art to form splines (82) on an inner tubular member that
is within an outer tubular member (Figure 6).” (Id.) Additionally, the
Examiner found that Lowery taught that these splines advantageously reduce
the contact surface between the two members and therefore reduce friction.
(Id.) According to the Examiner, Lowery’s splines project radially outward
from the inner member and are spaced from each other due to grooves (77b)
and, therefore, overlap the recited “contact areas.” (Id.)
The Examiner also found that Lowery’s splines run along the
longitudinal length of the inner member so that it forms different areas along
that length. (Id.) According to the Examiner, the term “area” is merely
defined as “any particular extent or part” and can be different regions along
a uniform member. (Id. at 4-5.) Therefore, the Examiner reasoned that the
longitudinal length of the inner member of Lowery or Ravenscroft can be
broken into different areas. (Id.)
According to the Examiner, it would have been obvious to a person of
ordinary skill in the art at the time the invention was made to modify the
inner elongated structure of Ravenscroft to comprise splines and to position
these splines proximal of the stent. (Id. at 5.)
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Appellants contend that Lowery taught that its splines are arranged
sequentially about the circumference of the inner elongated structure, rather
than along the length of the inner elongated structure. (App. Br. 13; Reply
Br. 3-4; see Lowery Fig. 5.) Further, Appellants assert that Lowery did not
teach or suggest that its splines are additionally spaced apart from an
adjacent contact area by an exposed outer surface. (Id.) Appellants also
assert that neither Ravenscroft nor Lowery taught or suggested positioning
the plurality of contact areas proximal of the stent. (App. Br. 14; Reply Br.
5.)
Additionally, Appellants assert that a skilled artisan would not have
had a reasonable expectation of successfully combining Ravenscroft and
Lowery because “the references are directed to very different catheter
delivery systems.” (App. Br. 15.) According to Appellants, Ravenscroft is
directed to a stent delivery system where the inner tubular member slides
relative to the outer tubular member to deploy the deliverable item, i.e., the
stent, whereas Lowery is directed to an everting catheter, where an everting
member grips the deliverable item, i.e., an endoscope, and then turns inside
out to pull the deliverable instrument into the desired location. (Id.)
Specifically, Appellants assert that Lowery’s “splines are used to assist the
everting element in gripping the endoscope … to prevent movement of the
endoscope relative to the everting element, while allowing the endoscope to
be pulled with the everting element once it is everted.” (Id.) According to
Appellants, there is no evidence that Ravenscroft and Lowery “can be
combined in the manner suggested by the Examiner as they function in
substantially different ways.” (Id.) Appellants assert that “[t]he Examiner
has used … impermissible hindsight in proposing modifications that go
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beyond the teachings of the applied references….” (Id. at 14-15.) Further,
Appellants assert that “Stevens does not correct the deficiencies of Lowery
or Ravenscroft.” (Id. at 16.)
The Examiner responds that the combination of Ravenscroft and
Lowery did not involve impermissible hindsight, but instead was based upon
the fact that “both references are directed to an inner tubular structure sliding
within an outer tubular structure” and that Lowery presented “an
advantageous way to reduce friction between these two sliding elements and
produce an easier device to use by a physician.” (Ans. 11.)
For the reasons discussed by Appellants, we agree that the Examiner
has not established that a skilled artisan would have had a reason or a
reasonable expectation of successfully combining the splines of Lowery’s
everting catheter with the stent delivery system of Ravenscroft. In
particular, while the system of Ravenscroft comprised two sliding elements,
Lowery disclosed that its inner tubular structure, i.e., an endoscope, “is
gripped by the everting element 25 as the everting element everts, the
everting element also pulls the endoscope along….” (Lowery col. 6, ll. 4-
6)(Emphasis added). Lowery explained that this gripping “prevents, or
substantially prevents, moving of the endoscope 61 relative to the everting
element and, in particular, it prevents relative longitudinal movement of the
endoscope and the everting element.” (Id. at ll. 9-14.) Thus, when Lowery
disclosed that an “advantage of the splines 70 and/or the grooves 71 is that
they decrease surface area of contact with exterior surface 73 [of the
endoscope] and reduce the friction between the surfaces 72 [of the everting
element] and 73” (id. at col. 7, ll. 33-36; col. 7, ll. 20-25 and col. 8, ll. 6-7)
this advantage related to a system comprising an everting element and
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designed to have a gripping contact with an inner elongated structure, i.e.,
endoscope, rather than a system comprising two sliding elements as the
Examiner reasoned. (See Ans. 11.) Consequently, the Examiner has not
established that a skilled artisan would have reasonably expected the
advantage of the splines taught by Lowery for its everting catheter to
translate to the sliding stent delivery system of Ravenscroft.
Accordingly, we reverse the obviousness rejection of independent
claim 47 and its dependent claims 50, 52-53, 55-56, 59, 61, 63, 77-79, 82-84
and 87-88.
II. The Rejection of Claims 48-49, 51, 65, 67-68, 70-71, 75-76, 80-81,
85-86 and 89-90.
The Examiner’s position is that Ravenscroft, in view of Lowery and
Stevens, disclosed a system for delivering a stent, as discussed regarding the
rejection of independent claim 47. (Ans. 7.) The Examiner added Bartholf
to the combination for its suggestion to employ a distal translucent region in
the stent system. (Id. at 8.)
Appellants assert that their arguments regarding the rejection of claim
47 are also applicable here. (App. Br. 17.)
For the reasons discussed regarding the rejection of claim 47, we
agree with Appellants that a skilled artisan would not have had a reasonable
expectation of successfully combining the splines of Lowery’s everting
catheter with the stent delivery system of Ravenscroft.
Accordingly, we reverse the obviousness rejection of claims
48-49, 51, 65, 67-68, 70-71, 75-76, 80-81, 85-86 and 89-90.

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SUMMARY
We reverse both of the obviousness rejections.

REVERSED

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