Ex Parte Kusleika et al

Patent Trial and Appeal Board

Sep 19, 2017

13548428 (P.T.A.B. Sep. 19, 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.
13/548,428 07/13/2012 Rich Kusleika H-KN-02173 (2) (1847-26
D
2080
77218 7590 09/21/2017
MeHtrnnio Vasionlar - APV Division
EXAMINER
c/o IP Legal Department
3576 Unocal Place
MILES, JONATHAN WADE
Santa Rosa, CA 95403 ART UNIT PAPER NUMBER
3731
NOTIFICATION DATE DELIVERY MODE
09/21/2017 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):
rs. docketingap v @ medtronic .com
medtronic_apv_docketing@cardinal-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICH KUSLEIKA, DOUG DUCHON, and
JOE TATALOVICH
Appeal 2015-006224
Application 13/548,428
Technology Center 3700
Before CHARLES N. GREENHUT, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Rich Kusleika et al. (Appellants) appeal under 35 U.S.C. § 134(a)
from the Examiner’s final decision rejecting claims 29-31, 33—35, 37—45,
and 47—61. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal 2015-006224
Application 13/548,428
BACKGROUND
Independent claims 29 and 31 are pending. Independent claim 29,
reproduced below, illustrates the claimed subject matter.
29. An implant for insertion into a body lumen
comprising:
an implant member including a plurality of cells at least
partially defined by a plurality of struts and a plurality of
bridges, selected of the cells disposed at proximal and distal
ends of the implant and having terminal ends attached thereto,
and the implant member having an initial length LI extending
along a longitudinal axis and an initial circumference Cl
extending circumferentially about the longitudinal axis, wherein
the implant member assumes a deformation circumference C2
having a value within 0% to 10% of a value of the initial
circumference Cl following application of a deformation force
substantially to the terminal ends thereof, wherein the
deformation force substantially to the terminal ends results in
the implant member assuming a permanent deformation length
L2.
REJECTIONS1
I. Claims 29, 31, 37-41, 44, 47, 48, and 50-61 stand rejected
under 35 U.S.C. § 102(b) as anticipated by Jayaraman (US 5,755,781, iss.
May 26, 1998). Final Act. 5.
II. Claims 30, 33—35, and 49 stand rejected under 35 U.S.C. §
102(b) as anticipated by, or in the alternative obvious over Jayaraman. Final
Act. 12.
III. Claims 42 and 43 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Jayaraman and Shanley (US 6,241,762 Bl, iss. June 5,
2001). Final Act. 13.
1 The Rejection under 35 U.S.C. § 112,11 has been withdrawn. Ans. 10.
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Application 13/548,428
IV. Claim 45 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Jayaraman and Ehr (US 6,193,744 Bl, iss. Feb. 27, 2001).
Final Act. 14.
ANAFYSIS
Rejection I
Independent claim 29 recites “application of a deformation force
substantially to the terminal ends” of the implant member that “results in the
implant member assuming a permanent deformation length F2.”
Independent claim 31 recites application of a longitudinal deformation force
to terminal ends of the implant, the application of the longitudinal
deformation force resulting in the implant’s tubular body “assuming a
permanent deformation length F2.”
The Examiner finds, inter alia, that Jayarama discloses an implant 130
having struts, bridges 132, terminal ends, an initial length FI, and an initial
circumference C, wherein application of a deformation force to the terminal
ends of the implant causes (1) the length to extend from length FI to length
F2, (2) the circumference to expand to a circumference C2 that is from 0-
10% of Cl, and (3) the bridges 132 to become rigid. Final Act. 5—6.
According to the Examiner, the implant need not be radially expanded for
the bridges 132 to become rigid, and once the bridges become rigid, “the
implant has achieved a permanent deformation length F2.” Id. at 6 (citing
Jayaraman Figs 26—29 and 5:42-44).
Appellants argue, inter alia, that Jayaraman does not disclose
applying a force to terminal ends of the implant, or that such a force would
cause the bridges 132 to elongate or the implant to achieve a permanent
deformation. Appeal Br. 9. According to Appellants, Jayaraman is silent
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Application 13/548,428
regarding applying a deformation force to terminal ends of the stent, and the
Examiner has not properly established that such a deformation force is
inherent in Jayaram’s disclosure. Id. at 8. Appellants further argue that
Jayaraman states that its bridges become rigid after expansion, which one
skilled in the art would understand to be radial expansion rather than
longitudinal expansion of the stent. Id.
Regarding establishing inherency of applying a longitudinal
deformation force in Jayaraman, the Examiner responds that “[assuming the
force applied to the terminal ends of the stent of Jayaraman is a reasonable
force, the stent of Jayaraman will function as claimed.” Ans. 12. The
Examiner further responds that, for various reason, “it would not make sense
for [Jayaraman’s] bridges 132 to become rigid upon radial expansion of the
stent.” Id. at 12—13.
Appellants reply that the Examiner provides no evidence that, inter
alia, (1) flexing of bridges 132 is caused by a deformation force applied to
terminal ends of the stent, and (2) the stent need not be radial expanded for
the bridges 132 thereof to be permanently deformed. Reply Br. 4—5.
Appellants have the better argument. Jayaraman is silent regarding
application of a longitudinal deformation force to it’s stent. Indeed,
Jayaraman appears to instead imply, in Figures 26—29, that curvature of a
patient’s vasculature dictates appropriate flexing of the bridges. Further,
regarding permanent deformation of its bridges 132, Jayaraman only states
that “[t]he plurality of vertically spaced interconnections 132 are used to
traverse a blood vessel,” and “become rigid after expansion of the stent in
place.” Jayaraman 5:41^44. Because the only “expansion” discussed in
Jayaraman is a radial expansion, one skilled in the art would understand
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Application 13/548,428
that, if the bridges 132 become rigid after expansion, they become rigid after
radial expansion rather than longitudinal expansion. The Examiner’s finding
that Jayaram discloses applying a longitudinal deformation force to its
implant terminal ends is at best speculative. The Examiner’s finding that
such a longitudinal deformation force would cause Jayaraman’s bridges to
permanently deform is in error.
For the reasons set forth above, we do not sustain the rejection of
independent claims 29 and 31. Claims 37—41, 44, 47, 48, and 50-61 depend
directly or indirectly from one of independent claims 29 and 31.
Rejections II—IV
Claims 30, 33—35, 42, 43, 45, and 49 depend directly or indirectly
from one of independent claims 29 and 31. The Examiner does not find or
conclude that Jayaraman, Shanley, or Ehr disclose or render obvious
applying a deformation force to terminal ends of an implant to cause the
implant to assume a permanent deformation length L2 that is different than
its initial length LI. We, therefore, do not sustain rejections II—IV.
DECISION
We REVERSE the rejection of claims 29, 31, 37—41, 44, 47, 48, and
50-61 under 35 U.S.C. § 102(b) as anticipated by Jayaraman.
We REVERSE the rejection of claims 30, 33—35, and 49 under 35
U.S.C. § 102(b) as anticipated by, or in the alternative obvious over
Jayaraman.
We REVERSE the rejection of claims 42 and 43 under 35 U.S.C. §
103(a) as unpatentable over Jayaraman and Shanley.
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We REVERSE the rejection of claim 45 under 35 U.S.C. § 103(a) as
unpatentable over Jayaraman and Ehr.
REVERSED
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