Ex Parte Richter

Patent Trial and Appeal Board

Jun 15, 2018

11729516 (P.T.A.B. Jun. 15, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
11/729,516 03/28/2007
75004 7590 06/19/2018
CADW ALADER, WICKERSHAM & TAFT LLP
ONE WORLD FINANCIAL CENTER
NEW YORK, NY 10281
Jacob Richter
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.
92077.045US3 7421
EXAMINER
PREBILIC, PAUL B
ART UNIT PAPER NUMBER
3774
NOTIFICATION DATE DELIVERY MODE
06/19/2018 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):
DOROTHY.AUTH@CWT.COM
DOCKETING@CWT.COM
JENNIFER.CHICK@CWT.COM
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JACOB RICHTER
Appeal2017-006890
Application 11/729,516 1
Technology Center 3700
Before RICHARD M. LEBOVITZ, JOHN G. NEW, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
LEBOVITZ, Administrative Patent Judge.
DECISION ON APPEAL
This appeal involves claims directed to a stent for implantation in a
vessel. The Examiner rejected the claims as obvious under 35 U.S.C. § 103.
Appellant appeals the rejections pursuant to 35 U.S.C. § 134. We have
jurisdiction under 35 U.S.C. § 6(b ). The rejections are reversed.
STATEMENT OF THE CASE
Appellant appeals from the Examiner's rejection of claims 1, 9, 12,
13, 15, 16, 31-34, 48, 53, 55, 57, 59, and 62. The claims are rejected by the
Examiner as follows (Appeal Br. 2):
1 The Appeal Brief ("Appeal Br.") 1 lists Medinol Ltd. as the real-party-in-
interest.
Appeal2017-006890
Application 11/729,516
1. Claims 1, 9, 12, 13, 15, 16, 53, 55, 57, and 59 under 35 U.S.C.
§ I03(a) as obvious in view of Dehdashtian (U.S. Pat. Appl. Pub 1. No.
2001/0020184 Al, published Sept. 6, 2001) and Greenhalgh (U.S. Pat. Appl.
Publ. No. 2003/0211135 Al, published Nov. 13, 2003).
2. Claims 31-34 and 62 under 35 U.S.C. § I03(a) as obvious in view
ofDehdashtian, Greenhalgh, and Richter (U.S. Pat. Appl. Publ. No.
2004/0230291 Al, published Nov. 18, 2004).
3. Claim 48 under 35 U.S.C. § I03(a) as obvious in view of
Dehdashtian, Greenhalgh, and Bessler (PCT Publ. No. WO 2004/045454
A2, published June 3, 2004) or Johnson (U.S. Pat. Appl. Publ. No.
2002/0046783 Al, published Apr. 25, 2002).
REJECTIONS BASED ON DEHDASHTIAN AND GREENHALGH
Claim 1
Independent claim 1 is reproduced below:
1. A stent for implantation in a vessel, comprising:
a first component comprising a plurality of separate,
unconnected stent segments, and
a second component consisting essentially of fibers
interconnecting said segments of the first component,
said fibers comprising a polymer material and a drug, the
fibers having a length and a bulged area, said length having a
constant diameter and said bulged area having a diameter larger
than the diameter of said length;
said first component and second component together
form a porous stent structure; and wherein the bulged area
consists essentially of the same polymer material as the length
and the drug is contained at least within the bulged area.
As indicated, claim 1 is directed to stent comprising a "a first
component comprising a plurality of separate, unconnected stent segments"
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Application 11/729,516
and "a second component consisting essentially of fibers interconnecting
said segments of the first component." The fibers have a length and a
bulged area. A drug is contained in the bulged area of the fibers.
The Examiner found that Dehdashtian describes a stent with both first
and second components as claimed, but not with fibers having a "bulged
area" that "consists essentially of the same polymer material as the [fiber]
length and the drug is contained at least within the bulged area." Final Act.
4--5. The Examiner found that Greenhalgh describes a stent with fibers
having bulged areas. Id. at 5. While Greenhalgh does not expressly teach a
"bulged area" in the fibers, the Examiner pointed to Figure 6 of Greenhalgh
as showing it. Id. at 5---6, 8. The Examiner determined it would have been
obvious to have utilized Greenhalgh's fibers with bulges in Dehdashtian's
stent as "a mere substitution of one known graft or cover for another known
graft or cover to yield a predictable result." Id.
Appellant contends that Greenhalgh does not teach or suggest fibers
having a bulged areas of the same polymer material as the fiber length as
required by claim 1. Appeal Br. 6. Appellant also contends that Greenhalgh
does not describe a method that would result in fibers having a fiber length
having a constant area and bulged area of larger diameter as also recited in
claim 1.
We agree with Appellant that the Examiner erred in determining that
claim 1 is obvious in view of Dehdashtian and Greenhalgh.
The Examiner stated that the electrospinning method described in
Greenhalgh would inherently result in a fiber with bulged areas as claimed.
Final Act. 13. However, the disclosure cited by the Examiner that supports
the presence of a fiber with a bulged area is Figure 6 of Greenhalgh. Final
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Application 11/729,516
Act. 5; Ans. 5. Figure 7 of Greenhalgh, for example, is also of an
electrospun fabric, but it does not appear to have a bulged region. While the
Examiner asserted that the choice of a particular fiber polymer would
inherently produce a bulge, the Examiner did not identify any disclosure in
Greenhalgh of the specific polymer that produced the bulges found to be
present in Figure 6 nor that the asserted bulges purportedly present in Figure
6 are a result of the polymer, alone.
Figure 6, as described in paragraph 18 of Greenhalgh, is of a fabric
impregnated with microspheres. The fabric is described by Greenhalgh as
"having elastic qualities" and is said by Greenhalgh to have microspheres
"trapped within the interstices of the fabric" and to have "curled fibrils
[which] behave like intertwined springs." Greenhalgh ,r 18. The Examiner
did not establish that the purported bulged areas shown in Figure 6 of
Greenhalgh are bulges in the fiber, as rejected claim 1 requires, rather than
being a fiber which is "curled" or a result of the presence of the
microspheres. To the extent that bulges comprise microspheres, the
micro sphere are said to be located in fabric interstices, and not as part of the
fiber, itself. Id. Thus, there is no reasonable basis from the written
description of Greenhalgh to necessarily conclude that the bulges shown in
Figure 6 are in the fiber, itself. Figure 7 is of an electrospun fabric of fibers
(id. ,r 19) which does not display a bulged area, further evidence that the
electrospinning process, itself, does not always produce a fiber with the
claimed properties.
In sum, the Examiner did not meet the burden of establishing that
Dehdashtian and Greenhalgh suggest "fibers comprising a polymer material
and a drug, the fibers having a length and a bulged area, said length having a
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Application 11/729,516
constant diameter and said bulged area having a diameter larger than the
diameter of said length" as required by claim 1. Accordingly, the rejection
of claim 1 based on Dehdashtian and Greenhalgh is reversed. The rejections
of claims 9, 12, 13, 15, 16, 31-34, 48, 53, 55, and 57, which depend from
claim 1, are reversed for the same reason and because the additionally cited
publications do not supply the deficiency in Dehdashtian and Greenhalgh.
Claim 59
Claim 59 is reproduced below:
59. A stent for implantation in a vessel, comprising:
a first component comprising a plurality of separate,
unconnected stent segments, and
a second component comprising a plurality of wires
interconnecting said segments of the first component, said wires
oriented in a manner selected from the group consisting of
extending parallel to a longitudinal axis of the stent and
extending helically around the stent segments.
The Examiner made the same findings for independent claim 59 as for
claim 1 with respect to the combination of Dehdashtian and Greenhalgh.
Final Act. 4, 9. With respect to the limitation in claim 59 of wires
"extending parallel to a longitudinal axis of the stent and extending helically
around the stent segments," the Examiner stated:
[I]t is noted that Figure 7 of [Greenhalgh] shows certain fibers
oriented in a diagonal fashion that would inherently result in a
helical orientation when wrapped around the stent. One may
reasonably take the position that this orientation is not disclosed
by Figure 7 of [Greenhalgh]. However, even if the claims are
interpreted in this manner, the Examiner asserts that the
presence of such an orientation in the Figure 7 embodiment
would have been considered prima facie obvious in view of
their presence in the smaller fiber embodiment of Figure 6 in
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Application 11/729,516
that it would be a mere combination of known features to yield
a predictable result.
Final Act. 8-9.
Figure 7 from Greenhalgh is reproduced below:
Figure 7 is a "microscopic photograph[] of an electrospun fabric
having relatively large fibrils (on the order of 5 micrometers in diameter)
that may be used as a drug-containing fabric." Greenhalgh ,r 19. The
Examiner stated that Figure 7 shows wires "extending helically around the
stent segments." Final Act. 8-9. The term "helical" refers to a spiral which
would have at least one wind around a stent segment. 2 The Examiner did
not point to a helical region in Figure 7 and we cannot discern one. The
2 https://www.merriam-webster.com/dictionary/helix
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Examiner alternatively asserted that a helically extending wire would be
obvious, but the Examiner provided no reason or evidence in support of the
assertion that such an embodiment would have been obvious to a person of
ordinary skill in the art. As argued by Appellant, the Examiner did not
establish that the electrospinning method described in Greenhalgh would be
capable of controlling the angle of the fiber deposition. Appeal Br. 14.
Rather, the product of Greenhalgh's method, as shown in Figure 7, appears
to be fibers that are randomly oriented.
For the foregoing reason, the rejection of claim 59, and dependent
claim 62, as obvious in view of Dehdashtian and Greenhalgh is reversed.
REVERSED
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