Ex Parte Scheer

Patent Trial and Appeal Board

Mar 26, 2013

11431366 (P.T.A.B. Mar. 26, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/431,366 05/09/2006 Ingo Werner Scheer IOOSUSP6076522 7905
79093 7590 03/26/2013
Ingo Scheer
6455 La Jolla Blvd.
La Jolla, CA 92037
EXAMINER
EDWARDS, LAURA ESTELLE
ART UNIT PAPER NUMBER
1717
MAIL DATE DELIVERY MODE
03/26/2013 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 PATENT TRIAL AND APPEAL BOARD
________________

Ex parte INGO WERNER SCHEER
________________

Appeal 2011-005213
Application 11/431,366
Technology Center 1700
________________

Before TERRY J. OWENS, PETER F. KRATZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

OWENS, Administrative Patent Judge.

DECISION ON APPEAL

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Application 11/431,366

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STATEMENT OF THE CASE
The Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 2, 4-7, 11, 19-26, 28 and 29. Claims 3, 9, 10 and 12-
14 have been canceled. Claim 8 stands allowable, claims 15-18 stand
withdrawn from consideration and claim 27 stands objected to but allowable
if rewritten in independent form. We have jurisdiction under
35 U.S.C. § 6(b).
The Invention
The Appellant claims a holding device. Claim 1 is illustrative:
1. A holding device for handling, securing and rotating one or more
hollow cylindrical objects having an inner and outer surface comprising:
a frame at least partially surrounding the hollow cylindrical object;
and
at least two support members being coupled to the frame and in
contact with at least a portion of the hollow cylindrical object,
wherein
the support members are rotably mounted to the frame and can be
rotated in relation to the frame to rotate the hollow cylindrical object;
the support members have a first position of being engaged with the
hollow cylindrical object at two opposing sides to secure the hollow
cylindrical object; and
at least one support member has a second position of being
disengaged from the hollow cylindrical object.

The References
Pacetti (Pacetti ‘863) US 6,527,863 B1 Mar. 4, 2003
Pacetti (Pacetti ‘659) US 6,565,659 B1 May 20, 2003
Verlee US 2004/0202773 A1 Oct. 14, 2004
Robina US 2005/0166841 A1 Aug. 4, 2005
Pacetti (Pacetti ‘979) US 7,404,979 B1 Jul. 29, 2008
(filed Sep. 30, 2002)
Madriaga US 7,416,609 B1 Aug. 26, 2008
(filed Nov. 25, 2002)
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Application 11/431,366

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The Rejections
The claims stand rejected as follows: claims 22 and 28 under
35 U.S.C. § 102(b) over Pacetti ‘659; claims 1, 2, 5, 7, 19, 21, 23-26, and 29
under 35 U.S.C. § 103 over Pacetti ‘979 in view of Pacetti ‘659, claim 4
under 35 U.S.C. § 103 over Pacetti ‘979 in view of Pacetti ‘659 and
Pacetti ‘863, claim 6 under 35 U.S.C. § 103 over Pacetti ‘979 in view of
Pacetti ‘659 and Madriaga, claim 11 under 35 U.S.C. § 103 over Pacetti ‘979
in view of Pacetti ‘659 and Robina, and claim 20 under 35 U.S.C. § 103 over
Pacetti ‘979 in view of Pacetti ‘659 and Verlee.
OPINION
The rejections are affirmed as to claims 1, 2, 4-7, 11, 20-25 and 28
and reversed as to claims 19, 26, and 29.
Rejection under 35 U.S.C. § 102(b)
The Appellant does not challenge the rejection under
35 U.S.C. § 102(b) (Br. 5-6). We therefore summarily affirm that rejection.
Rejections under 35 U.S.C. § 103
Claims 1, 2, 4-7, 11, 20, 21, and 23-25
The Appellant argues claims 1, 2, 4-7, 11, 20, 21, and 23-25 in the
following groups: 1) claims 1, 2, 4, 6, 11, 20, 21, 23, and 24, and 2) claims 5
and 7, and 3) claim 25 (Br. 6-9). Although additional references are applied
in the rejections of claims 4, 6, 11, and 20 the Appellant does not provide a
substantive argument as to the separate patentability of those claims (Br. 11-
12). We therefore limit our discussion to one claim in each group, i.e.,
claims 1, 5 and 25. See 37 C.F.R. § 41.37(c)(1)(vii) (2007).

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Claim 1
Pacetti ‘979 discloses “[a] device for spin coating an implantable
medical device, such as a stent” (abstract). Pacetti ‘979’s device includes a
round table (16) which is rotatable about a shaft (18) by a motor, and a
mandrel (14) which is rotatable about its longitudinal axis by a second motor
and is mounted above the table (16) by vertical arms attached to the
table (16) (col. 2, l. 67 – col. 3, l. 3; col. 3, ll. 8-10; Fig. 1). A stent (12) can
be positioned securely around the mandrel (14) (col. 2, ll. 66-67). In
operation, the stent (12) is coated either before or after being positioned
around the mandrel (14) and excess coating material is removed by rotating
the table (16) about shaft 18’s axis (22) and optionally rotating the
mandrel (14) about its longitudinal axis (20) (col. 3, ll. 54-57; col. 4, ll. 1-
11).
Pacetti ‘659 discloses “a stent mounting device and a method of
coating a stent using the device” (col. 1, ll. 9-10). The mounting device (20)
includes a mandrel (24) between a coning end portion (36) of a support
member (22) and a coning end portion (42) of a lock member (26) (col. 3,
ll. 30-33, 39-59; col. 4, ll. 1-2; Figs. 2A, 2B). The support member (22) is
rotatable by a motor (30A) and is movable back and forth along a rail (34)
by another motor (30B) (col. 3, ll. 33-38; Fig. 2A). A stent (10) surrounds
the mandrel (24) and is pinched securely between the coning end
portions (36, 42) (col. 4, ll. 12-13, 18-19; Fig. 3).
The Appellant argues that Pacetti ‘979’s table (16) and shaft (18),
which the Examiner relies upon as corresponding to the Appellant’s frame
(Ans. 4), are not suitable for handling a medical device and do not connect
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two support members which are located at opposite ends of a stent and are
movable axially (Br. 7).
Pacetti ‘979’s table (16) is capable of holding a device (stent 12) by
way of a mandrel (14) supported at each of its ends by a vertical arm
extending upwardly from the table (16) (Fig. 1). Pacetti ‘659’s coning end
portions (36, 42), which the Examiner relies upon as corresponding to the
Appellant’s support members (Ans. 4), are rotatable by a motor (30A)
(col. 3, ll. 33-35), and the support member (22)’s end portion (36) is
movable axially by a second motor (30B) (col. 3, ll. 36-38).1
The Appellant argues that Pacetti ‘979’s table (16) and shaft (18) do
not extend between the support members outside the stent (12) and do not
allow for rotation of the stent without a mandrel (Br. 7-8).
That argument is not convincing because it is directed toward
limitations which are not in the claim. See In re Self, 671 F.2d 1344, 1348
(CCPA 1982) (“[A]ppellant's arguments fail from the outset because . . .
they are not based on limitations appearing in the claims.”).
The Appellant argues that Pacetti ‘979 does not disclose a frame
which does not contact the stent (Br. 7-8).
That argument also is directed toward a limitation which is not in the
claim. Moreover, Pacetti ‘979’s table (16) does not contact the stent
(Fig. 1).

1 The Appellant’s claim 1 requires only that “at least one support member
has a second position of being disengaged from the hollow cylindrical
object.”
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Claim 5
The Appellant argues that Pacetti ‘659’s area to the right of
motor 30A, i.e., the support member (22), does not transmit rotary motion
(Br. 8).
Pacetti ‘659’s support member (22) rotates the stent (10) (col. 3,
ll. 33-35). Pacetti ‘979’s mandrel (14) support also can rotate the stent (12)
(col. 3, ll. 8-10).
Claim 25
The Appellant argues that Pacetti ‘659 does not disclose multiple lock
members (26) (Br. 9).
The Appellant’s claim 25 merely requires that the device is capable of
precisely aligning, rotating and coating several hollow cylindrical objects.
Thus, the claim encompasses an apparatus comprising multiple holding
devices of the type suggested by Pacetti ‘979 and Pacetti ‘659 to increase
production. See In re Harza, 274 F.2d 669, 671 (CCPA 1960) (“It is well
settled that the mere duplication of parts has no patentable significance
unless a new and unexpected result is produced, and we are of the opinion
that such is not the case here.”).
The Appellant argues that Pacetti ‘979 and Pacetti ‘659 do not provide
motivation, suggestion, or reasonable expectation of success in solving the
problem solved by the Appellant, i.e., inhomogeneity of coating thickness
(Br. 10).
That argument is not well taken because to establish a prima facie
case of obviousness, references need not be combined for the purpose of
solving the problem solved by the Appellant. See In re Kemps, 97 F.3d
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1427, 1430 (Fed. Cir. 1996); In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir.
1992); In re Dillon, 919 F.2d 688, 693 (Fed. Cir. 1990) (en banc); In re
Lintner, 458 F.2d 1013, 1016 (CCPA 1972).
For the above reasons we are not persuaded of reversible error in the
rejections of claims 1, 2, 4-7, 11, 20, 21, and 23-25.
Claims 19, 26, and 29
Claim 19 requires that “the frame of the holding device is secured in
an angular position”.
The Examiner argues that Pacetti ‘659’s shields (28A, 28B) secure
and shield the end portions of the stent during processing (col. 4, l. 30 –
col. 5, l. 13) (Ans. 5, 12-13).
The Examiner relies upon Pacetti ‘979’s table (16) and shaft (18) as
corresponding to the Appellant’s frame (Ans. 4). The Examiner has not
established that the applied prior art would have rendered prima facie
obvious, to one of ordinary skill in the art, a frame secured in an angular
position. Hence, we reverse the rejection of claim 19 and its dependent
claim 29.
Claim 26 requires that “the axial position of the support members is
determined by lock members.”
The Examiner points out that Pacetti ‘659 discloses a locking
member (26) (col. 4, ll. 1-13) and argues that “[i]t would have been within
the purview of on skilled in the art to utilize locking means or members as
evidenced by Pacetti ‘659 in the Pacetti ‘979 holding device in order to
secure the stent and prevent movement thereof when coating to minimize
uneven coating of the stent” (Ans. 6, 13).
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The Examiner has not established that the applied prior art would
have rendered prima facie obvious, to one of ordinary skill in the art, locking
members (i.e., more than one locking member) for determining the axial
position of at least two support members coupled to a frame (i.e., coupled to
the same frame) as required by claim 1 from which claim 26 depends.
Accordingly, we reverse the rejection of claim 26.
DECISION/ORDER
The rejection under 35 U.S.C. § 102(b) of claims 22 and 28 over
Pacetti ‘659 is affirmed. The rejection under 35 U.S.C. § 103 of claims 1, 2,
5, 7, 19, 21, 23-26, and 29 over Pacetti ‘979 in view of Pacetti ‘659 is
affirmed as to claims 1, 2, 5, 7, 21 and 23-25 and reversed as to claims 19,
26 and 29. The rejections under 35 U.S.C. § 103 of claim 4 over
Pacetti ‘979 in view of Pacetti ‘659 and Pacetti ‘863, claim 6 over
Pacetti ‘979 in view of Pacetti ‘659 and Madriaga, claim 11 over
Pacetti ‘979 in view of Pacetti ‘659 and Robina and claim 20 over
Pacetti ‘979 in view of Pacetti ‘659 and Verlee are affirmed.
It is ordered that the Examiner’s decision is affirmed-in-part.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
AFFIRMED-IN-PART

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