Ex Parte Morris et al

Patent Trial and Appeal Board

Oct 27, 2016

13791368 (P.T.A.B. Oct. 27, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
131791,368 03/08/2013
45159 7590 10/31/2016
SQUIRE PB (Abbott)
275 BATTERY STREET, SUITE 2600
SAN FRANCISCO, CA 94111-3356
FIRST NAMED INVENTOR
Grayson Morris
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
050623.01596 1615
EXAMINER
EDWARDS, LAURA ESTELLE
ART UNIT PAPER NUMBER
1717
NOTIFICATION DATE DELIVERY MODE
10/31/2016 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):
sfripdocket@squirepb.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ADVANCED CARDIOVASCULAR SYSTEMS, INC.
Appeal2015-004380
Application 13/791,368
Technology Center 1700
Before LINDA M. GAUDETTE, MICHELLE N. ANKENBRAND, and
CHRISTOPHER L. OGDEN, Administrative Patent Judges.
GAUDETTE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal2015-004380
Application 13/791,368
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's decision2
finally rejecting claims 1, 3-11, and 13 under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over Leidner et al. (US 6,056,993, issued May 2, 2000 ("Leidner")) in
view of McBride-Sakal (US 2003/0109837 Al, published June 12, 2003
("McBride")). We have jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
The invention relates to a stent coating apparatus that utilizes a brush
assembly for applying a coating to an abluminal (outer) stent surface.
Specification filed Mar. 8, 2013 ("Spec."), 1 (Technical Field). Coatings applied
to stents include polymeric carriers impregnated with a drug or a therapeutic
substance. Id. at 2. According to the Specification, in known apparatuses used for
coating stents, the coatings are applied via dipping or spraying the coating onto the
stent. Id. A major drawback of known stent coating techniques is that the coating
is applied to both inner and outer surfaces of the stent. Id. The coating on the
luminal (inner) stent surface can have a detrimental impact on the stent's
deliverability and the coating's mechanical integrity. See id. at 2-3. "Moreover,
1 Appellant identifies the real party in interest as Abbott Cardiovascular Systems,
Inc. Appeal Brief filed November 12, 2014 ("App. Br."), 1.
2 Examiner's Answer mailed December 26, 2014 ("Ans."), 2 (restating the
rejection to take into account Appellant's amendments after final). See also Final
Office Action mailed Mar. 11, 2014 ("Final Act."); Advisory Action mailed May
28, 2014 (stating that the obviousness-type double patenting rejection is overcome
by Appellant's filing of a terminal disclaimer on May 12, 2014); Advisory Action
mailed June 25, 2014 (entering Appellant's June 11, 2014 after-final amendment
cancelling claim 2 and amending claim 1 to include the limitations of cancelled
claim 2); Advisory Action mailed December 2, 2014 (entering Appellant's
November 11, 2014 after-final amendment to correct the claim dependencies and
cancel claim 12, and withdrawing the rejection under 35 U.S.C. § 112, second
paragraph).
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Appeal2015-004380
Application 13/791,368
from a therapeutic standpoint, the therapeutic agents on an inner surface of the
stent get washed away by the blood flow and typically can provide for an
insignificant therapeutic effect." Id. at 2. The inventive stent coating apparatus is
said to overcome the drawbacks associated with the prior art coating apparatuses
by utilizing a brush assembly to dispense the coating, thereby enabling selective
coating of stent surfaces and minimizing the formation of defects. Id. at 3.
Claim 1, the sole independent claim on appeal, is reproduced below:
1. A stent coating apparatus comprising:
a brush assembly including a plurality of fibers;
a stent support configured to carry a stent at a position in which
the stent is in contact with the plurality of fibers; and
a dispensing mechanism configured to dispense a coating
composition to the plurality of fibers, wherein the dispensing
mechanism includes a hollow dispensing needle configured to
dispense the coating composition to the plurality of fibers.
Reply Brief filed Feb. 26, 2016 ("Reply Br.") (Claims Appendix).3
The Examiner makes the follo\'l1ing findings in support of the rejection of
claims 1, 3-11, and 13 :
Leidner discloses a stent coating apparatus that includes a hollow needle
dispensing tip (38/39) configured to dispense a coating material. Ans. 2 (citing
Leidner 6:28-39, 62---64). "Leidner discloses that a contact type applicator,
[fiber/bristle] brush assembly, can be used in the apparatus to apply coating
material." Id. (citing Leidner 14:42--47). Leidner does not disclose explictly the
use of the hollow needle to dispense/supply fluid to the fibers/bristles of the brush
assembly. Id. at 3. McBride discloses an apparatus comprising a brush assembly
3 Appellant submitted a new Claims Appendix with the Reply Brief, noting the
Claims Appendix to the Appeal Brief contained a typographical error. Reply Br. 2.
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Appeal2015-004380
Application 13/791,368
mounted to the end of a hollow shaft through which a coating material (i.e., a
cleaning material or medication) is supplied for application to a stent. Id. (citing
McBride iTiT 33-35, 46-48).
Based on the above findings, the Examiner concludes that at the time of
Appellant's invention, "[i]t would have been obvious to one of ordinary skill in the
art to provide a brush assembly as taught by McBride in fluid communication with
the needle tip [outlet] of the Leidner coating applicator in order to effect an
[internal] fluid supplied contact type applicator in brush form." Id.
Appellant argues the Examiner's findings are not supported by the evidence
and are insufficient to provide a reason why one of ordinary skill in the art would
have included a brush assembly on Leidner' s needle dispensing tip. See App. Br.
5-8. Appellant notes that Leidner' s needle and Leidner' s brush assembly are used
for two entirely different purposes. Reply Br. 5; see also App. Br. 5---6.
Specifically, Leidner describes the brush as one several alternative means of
coating a mandrel with a water soluble coating that facilitates removal of a
subsequently formed prosthesis. Reply Br. 5 (citing Leidner 14:42--47); see also
App. Br. 5. Leidner describes the needle as being used to deposit fibrous material
on the mandrel when forming a tubular prosthesis (e.g., a stent). Reply Br. 4
(citing Leidner 5:24-29, 60-62; 6: 1--4, 25-32); see also App. Br. 5---6. Appellant
disagrees with the Examiner's finding that McBride discloses an apparatus that can
be used to apply a coating material. App. Br. 6. Appellant argues McBride
describes an apparatus having a brush that is used solely on an implanted stent for
removal of biofilm or other occluding material. Id. Appellant acknowledges that
during use of the apparatus, McBride describes pumping an irrigation solution
containing an antibiotic to the brush to facilitate the cleaning operation, but argue
there is no description of using the brush to apply a coating of the antibiotic or the
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Appeal2015-004380
Application 13/791,368
cleaning materials. Id.; see also Reply Br. 4. Appellant thus maintains neither
Leidner nor McBride provides an apparent reason to modify Leidner's apparatus to
use a combination of a needle and a brush. Id. at 8.
In response to Appellant's arguments, the Examiner asserts that "[i]n light of
all the teachings of both Leidner and McBride, one skilled in the art would find it
convenient and useful to fluid supply a brush assembly to apply coating material
including medicine or antibiotic to surface(s) of the stent." Ans. 6-7. We are
persuaded by Appellant's arguments in the Appeal and Reply Briefs, however, that
the evidence on the record before us does not support the Examiner's finding that
one of ordinary skill in the art would have had a reason to include a brush
assembly on Leidner's needle dispensing tip.
In sum, Appellant has argued persuasively that the Examiner relies on
improper hindsight reconstruction to supply a reason or suggestion for modifying
Leidner' s apparatus to achieve an apparatus as recited in the claims. Accordingly,
the Examiner's decision to reject claims 1, 3-11, and 13 is:
REVERSED
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