Ex Parte Jagger et al

Board of Patent Appeals and Interferences

Jun 12, 2012

10601952 (B.P.A.I. Jun. 12, 2012)

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.
10/601,952 06/23/2003 Karl A. Jagger 1001.2192101 7910
11050 7590 06/12/2012
SEAGER, TUFTE & WICKHEM, LLC
1221 Nicollet Avenue
Suite 800
Minneapolis, MN 55403
EXAMINER
SONNETT, KATHLEEN C
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
06/12/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte KARL A. JAGGER, LINDA S. CHRISTENSON, TODD ROWE,
STANLEY NORDIN, DANIEL NYGAARD, RANDALL J. BEYREIS,
and JON LIVINGSTON
__________

Appeal 2011-004375
Application 10/601,952
Technology Center 3700
__________

Before TONI R. SCHEINER, ERIC GRIMES, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of making a stent deployment system, which the Examiner has rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification discloses a balloon catheter stent deployment
system in which a stent is mounted around the middle portion of a balloon
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Application 10/601,952

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(Spec. 3: 13-14) and the “proximal section of the balloon has an uninflated
initial outer diameter greater than the initial outer diameter of the stent” (id.
at 3: 20-22). “This larger diameter of the proximal section of the balloon
can protect the distal end of the stent from frictional forces in the event the
balloon catheter needs to be withdrawn during a procedure” (id. at 3: 22-24)
and “can also provide a centering action for the balloon and stent as the
balloon catheter is advanced” (id. at 3: 25-26).
Claims 9-20 are on appeal. Claim 9 is the only independent claim and
is directed to a method of making a balloon catheter stent deployment
system that begins with the step of:
providing a balloon catheter comprising
an inner tubular shaft disposed within an outer tubular
shaft, the inner and outer shafts each having proximal and distal
ends, the distal end of the inner shaft extending distally beyond
the distal end of the outer shaft, and
an inflatable balloon having a proximal end attached to
the outer shaft near the distal end thereof and a distal end
attached to the inner shaft near the distal end thereof . . .
(Claim 9.) The complete text of claim 9 is reproduced in the Claims
Appendix of the Appeal Brief (pages 16-17).
The Examiner has rejected claims 9 and 13 under 35 U.S.C. § 103(a)
as obvious based on the method discussed as “prior art” in Shortt,
1
combined
with Morales
2
and Hanson
3
(Answer 3). The Examiner has also rejected
claims 9 and 18 under 35 U.S.C. § 103(a) as obvious based on the method

1
Shortt, US 6,948,223 B2, issued Sept. 27, 2005.
2
Morales, US 5,920,975, issued July 13, 1999.
3
Hanson et al., US 5,893,868, issued Apr. 13, 1999.
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disclosed by Shortt as its invention, combined with Morales and Hanson
(Answer 6).
The Examiner finds that Shortt‟s discussion of a prior art method
meets most of the limitations of claim 9, including the “providing” step
quoted above (Answer 3-4). The Examiner relies on Morales for the step in
claim 9 of crimping a stent after it is placed over a balloon (id. at 4-5) and
relies on Hanson for the limitation of maintaining the diameter of the distal
section of the balloon no larger than the diameter of the stent (id. at 5).
With regard to the balloon catheter‟s inner and outer tubular shafts,
and attachment of the balloon to them, the Examiner provided an annotated
version (reproduced below) of Shortt‟s Figure 2:

(Answer 14.) The figure is annotated to identify the part of the balloon
proximal to the proximal pillow as the “outer shaft,” the part of the balloon
between and including the proximal and distal pillows as the “balloon,” and
the central shaft as the “inner shaft.”
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The Examiner also finds that the method disclosed by Shortt as its
invention meets the same limitations that are met by the “prior art” method
discussed by Shortt (Answer 6-7). The Examiner finds that the balloon
catheter required by the claims is shown in Shortt‟s Figure 7 (id. at 6).
Shortt‟s Figure 7a is shown below:

The figure shows “a delivery system with a standard stent profile” (Shortt,
col. 5, ll. 9-10). Figures 7b and 7c are similar but show the balloon tapered
(Figure 7b) or with a smaller diameter distal to the proximal pillow (Figure
7c).
Appellants argue that Shortt “does not teach „an inflatable balloon
having a proximal end attached to the outer shaft near the distal end thereof
and a distal end attached to the inner shaft near the distal end thereof,‟” as
required by the claims (Reply Br. 4). That is, “[i]n Shortt, the balloon is part
of the outer shaft. Thus, the distal end of the outer shaft is distal the balloon,
as illustrated in Figure 2 or Figures 7a-c of Shortt. It is the distal end of the
outer shaft that is attached to the distal end of the inner shaft.” (Id.)
Appellants argue that “[o]ne cannot simply assert that the outer shaft ends
proximal the balloon, when Shortt clearly shows the outer shaft extending
distal of the balloon” (id. at 5).
We agree with Appellants that the Examiner has not persuasively
shown that either the “prior art” method discussed by Shortt or Shortt‟s
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Application 10/601,952

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inventive method itself would have made obvious a method that includes
providing the balloon catheter required by claim 9. In both cases, the
configuration of the shaft, balloon, and stent are the same. And in both
cases, the configuration includes only a single shaft, not an inner shaft and
outer shaft as required by the claims on appeal.
Although the Examiner‟s annotated drawing indicates that the “outer
shaft” of Shortt‟s device is the portion of the balloon proximal to the
proximal pillow, that designation appears to be arbitrary. We agree with
Appellants that, even if the uninflated balloon surrounding the central shaft
is interpreted as the “outer shaft” required by the claims, then the outer shaft
ends at the distal end of the device, distal to the balloon and co-terminal with
the end of the (inner) shaft, as shown in Figures 2 and 7a-c. The Examiner
therefore has not shown that Shortt discloses or would have made obvious a
“balloon catheter comprising . . . an inflatable balloon having a proximal end
attached to the outer shaft near the distal end thereof,” as required by the
claims on appeal.
“[T]he examiner bears the initial burden, on review of the prior art or
on any other ground, of presenting a prima facie case of unpatentability.” In
re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992).
The Examiner has not persuasively shown that either the “prior art” or
inventive method disclosed by Shortt would have made obvious a method
that includes the “providing” step required by the claims on appeal. The
Examiner has not pointed to any disclosure in Morales or Hanson that would
remedy this deficiency. Nor has the Examiner identified any disclosure in
any of the additional references cited in the rejections applied to dependent
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claims 10-12, 14-17, 19 and 20 (Answer 5-6 and 8-13) that would make up
for the deficiency in Shortt. We therefore reverse all of the rejections on
appeal.

REVERSED

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