Ex Parte Momma et al

Board of Patent Appeals and Interferences

Jul 9, 2012

10630355 (B.P.A.I. Jul. 9, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________

Ex parte CARSTEN MOMMA, ANDREAS BECKER,
ROBERT SCHMIEDL, and BERND HEUBLEIN
__________

Appeal 2011-004117
Application 10/630,355
Technology Center 3700
__________

Before ERIC GRIMES, FRANCISCO C. PRATS, and ERICA A.
FRANKLIN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to an
endovascular implant. The Examiner has rejected the claims as obvious.
We have jurisdiction under 35 U.S.C. § 6(b). We reverse.
STATEMENT OF THE CASE
The Specification states that, to achieve certain therapeutic effects, “it
is necessary to get to or into the proximity of the smooth muscle cells of the
wall of the vessel (media region) as quickly as possible and with a high level
Appeal 2011-004117
Application 10/630,355

2
of concentration” (Spec. 4, ¶ 0010). The Specification discloses an
“endovascular implant for the application of an active substance into the
media of a blood vessel…. [T]he implant has a plurality of microdevices for
the application of the active substance.” (Id. at 4, ¶ 0012.) The
microdevices include “at least one microcannula which is raised out of the
plane of the surface of the implant to such an extent that when the implant
bears in surface contact against the wall of the blood vessel the micro-
cannula penetrates into the media of the blood vessel” (id. at 4-5, ¶ 0012).
Claims 1, 3-15, and 26-29 are on appeal. Claim 1, the only
independent claim, reads as follows:
1. An endovascular implant for applying an active substance into the
media of a blood vessel, said implant comprising:
a base body which has a plurality of microdevices for applying the
active substance disposed at least in portion-wise manner at a surface of the
implant adapted for facing towards the blood vessel, wherein each said
microdevice includes at least one microcannula which projects from the
implant surface by between 100 and about 400 μm such that, when the
implant bears in surface contact against a wall of the blood vessel, the
microcannula penetrates into the media of the blood vessel, and
at least one deposit of the active substance which is in communication
with at least one said microcannula.

The Examiner has rejected claims 1, 3-13, and 26-29 under 35 U.S.C.
§ 103(a) as being obvious in view of Wu.1 The Examiner has also rejected
claims 14 and 15 under 35 U.S.C. § 103(a) as being obvious in view of Wu
and Hossainy.2 The same issue is dispositive for both of these rejections.

1 Wu, et al. US 6,254,632 B1, July 3, 2001.
2 Hossainy et al., US 6,287,628 B1, Sept. 11, 2001.
Appeal 2011-004117
Application 10/630,355

3
The Examiner finds that Wu discloses “a stent having a base body
with a plurality … of microdevices 200 that project from the implant surface
to form a microcannula 218 on the outer surface to engage the vessel wall”
(Answer 4). The Examiner finds that Wu discloses that the stent can include
a cover with a thickness from 25-500 μm and that “the protrusions or
‘microcannulae’ can extend out of the cover to penetrate into tissue” (id.).
The Examiner concludes that it would have been obvious to have a
protrusion or microcannula dimension “within the claimed range of 100 to
about 400μm … to have a dimension long enough in order to protrude
through the cover having the thickness … [of] 300 to 500μm as disclosed by
Wu” (id.).
Appellants argue that “[o]ne of ordinary skill in the art would not have
found any suggestion or motivation to modify the length of the ‘craters’ of
Wu to 100-400 μm, or to any length other than that disclosed by Wu, 10-80
μm” (Appeal Br. 19).
In response, the Examiner argues that “Wu gives … the dimension of
the cover to be 25-500μm and thus if a microcannula is to penetrate through
the cover into the vessel wall it must be of a greater length than the cover”
(Answer 7). The Examiner reasons that “Applicant claims a length of the
microcannula to be 100-400μm of which falls in the range disclosed by Wu”
(id.).
We agree with Appellants that the Examiner has not adequately
shown that Wu would have made obvious an endovascular implant with
microdevices that include “at least one microcannula which projects from
the implant surface by between 100 and about 400 μm,” as required by claim
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Appeal 2011-004117
Application 10/630,355

5
height of the protruding structure is less than the cover thickness, so that the
structures do not protrude above the cover. In other embodiments, the
height is greater than the cover thickness, which may advantageously also
allow the protruding structures to anchor the covered stent to the lumen
wall.” (Id. at col. 9, ll. 14-19.)
Claim 1 requires that microdevices of the implant include “at least one
microcannula which projects from the implant surface by between 100 and
about 400 μm.” The Examiner concludes that since Wu discloses implants
having a cover with a thickness of 25 μm to 500 μm, Wu suggests devices
with microcannulae or protrusions in this range so they will project above
the surface of the implant. However, the Examiner has not provided
evidence or sound technical reasoning to support a conclusion that a skilled
worker would have understood Wu to suggest making the height of the
protrusions greater than a cover thickness of 100 to 400 µm. Wu expressly
discloses that its protrusions are typically 10-80 µm in height, and the
Examiner has not adequately shown that Wu’s discussion of the thickness of
its cover would have made obvious the microcannula required by claim 1.
That is, the Examiner has not adequately shown that a skilled worker would
have understood Wu’s discussion of protruding structures that are higher
than the cover thickness to include cover thicknesses that would require
protrusions 100 to 400 µm in height in order to protrude from the cover.
We therefore agree with Appellants that the Examiner has not
adequately explained how Wu would have made obvious implants with
microdevices that include “at least one microcannula which projects from
the implant surface by between 100 and about 400 μm.” Thus, we reverse
Appeal 2011-004117
Application 10/630,355

6
the rejection of independent claim 1 and dependent claims 3-13 and 26-29 as
being obvious in view of Wu.
With respect to the rejection of claims 14 and 15, the Examiner relies
on Wu as discussed above, and relies on Hossainy only to supply dependent
claim limitations. Thus, we also reverse this rejection.
SUMMARY
We reverse the rejection of claims 1, 3-15, and 26-29 under 35 U.S.C.
§ 103(a).

REVERSED

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