Ex Parte Sundar

Board of Patent Appeals and Interferences

Jan 25, 2012

10413827 (B.P.A.I. Jan. 25, 2012)

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.
10/413,827 04/15/2003 Rangarajan Sundar PA905CIP(2650/112) 4503
7590 01/25/2012
Michael J. Jaro
MEDTRONIC AVE
3576 Unocal Place
Santa Rosa, CA 95403
EXAMINER
HOUSTON, ELIZABETH
ART UNIT PAPER NUMBER
3731
MAIL DATE DELIVERY MODE
01/25/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte RANGARAJAN SUNDAR
____________________

Appeal 2009-012109
Application 10/413,827
Technology Center 3700
____________________

Before: STEFAN STAICOVICI, PHILLIP J. KAUFFMAN, and
MICHAEL L. HOELTER, Administrative Patent Judges.

KAUFFMAN, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-012109
Application 10/413,827
2
STATEMENT OF CASE
Appellant seeks review of the Examiner’s rejection of claims 6-10 and
28 under 35 U.S.C. § 103(a) as unpatentable over Verhoeven (US
2005/0251250 A1; pub. Nov. 10, 2005), and claims 1-5 and 27 as
unpatentable over Verhoeven and Dinh (US 5,697,967; iss. Dec. 16, 1997).
We have jurisdiction under 35 U.S.C. § 6(b). We affirm.
Appellant’s claimed invention “relates to a stent delivery system and
device having a coating.” Spec. 1, para. [0002]. Independent claim 6,
reproduced below, is representative (emphasis added):
6. A stent device comprising:
a body; and
at least one coating disposed on the body, the coating
having an average surface roughness of less than 75
nanometers.
CONTENTIONS AND ISSUES
Appellant argues claims 6-8, 10, and 28 as a group, and we select
independent claim 6 as representative. App. Br. 9-13; see 37 C.F.R.
§ 41.37(c)(1)(vii). Appellant argues claims 1-3, 5, and 27 as a group, and
we select independent claim 1 as representative. App. Br. 14-16. Because
the limitation at issue (the average surface roughness of the stent coating) is
contained in both claims 1 and 6, we analyze claim 6, and our analysis is
equally applicable to claim 1. Appellant presents separate arguments for
claims 4 and 9. App. Br. 13, 15-16.
It is uncontested that Verhoeven discloses the stent of independent
claim 6, except the coating having an average surface roughness of less than
75 nanometers. Ans. 3-4; App. Br. 9-16; Reply Br. 5-9. It is uncontested
that Verhoeven discloses that low surface roughness is preferable, and that a
substantially uniform coating having a low surface roughness can prevent
Appeal 2009-012109
Application 10/413,827
3
complications such as blood clotting. Ans. 5; App. Br. 10, 14 (conceding
that Verhoeven discloses that low surface roughness may be desirable, and
not contesting the benefit of low surface roughness). The Examiner
concluded that because the claimed range lacks criticality, modification of
Verhoeven’s surface roughness to meet the claimed range would have been
an obvious matter of design choice. Ans. 3.
Appellant argues that Verhoeven does not disclose a stent coating
having an average surface roughness of less than 75 nanometers, and that the
Specification discloses “dramatic and surprising results.” App. Br. 9-16;
Reply Br. 5-9.
Regarding claims 4 and 9, Appellant additionally argues that
Verhoeven does not disclose a coating having a thickness of 1 to 150
nanometers and an average surface roughness of less than 75 nanometers.
App. Br. 13, 15-16.
This appeal presents the following issues:
Does Verhoeven disclose or render obvious a stent coating having an
average surface roughness of less than 75 nanometers?
Has Appellant demonstrated the criticality of the average surface
roughness range of claim 6?
Would a stent coating having a thickness of 1 to 150 nanometers and
an average surface roughness of less than 75 nanometers, as in claims 4 and
9, have been obvious in view of Verhoeven?
ANALYSIS
Claims 1-3, 5-8, 10, 27, and 28
We are unpersuaded by Appellant’s arguments that Verhoeven does
not disclose a stent coating having an average surface roughness of less than
75 nanometers.
Appeal 2009-012109
Application 10/413,827
4
First, Appellant argues that Verhoeven discloses relative surface
roughness and RMS surface roughness, but does not disclose average
surface roughness within the claimed range. App. Br. 10-12; Reply Br. 6-7.
This argument is unresponsive. The Examiner did not find that Verhoeven
discloses surface roughness in terms of average surface roughness. Ans. 3.
Second, Appellant contends that Verhoeven’s coating thickness is
independent of, and unrelated to, relative roughness, and that “at most”
Verhoeven discloses that the uncoated surface of the stent is visually rougher
than the coated surface. App. Br. 12-13 (citing Verhoeven, paras. [0013],
[0039], [0042]). Appellant’s characterization is inaccurate. Verhoeven
discloses a direct relationship between coating thickness and relative surface
roughness.1 See Verhoeven, paras. [0012], [0041]-[0042]. Further,
Verhoeven discloses more than the uncoated surface of the stent being
visually rougher than the coated surface. See, e.g., Verhoeven , para. [0011]
(disclosing a uniform coating thickness of 0.1 micrometers with a relative
standard deviation of no greater than about 10 percent).
Third, Appellant calculates that Verhoeven’s example of a dry coating
thickness of 4 micrometers at a relative surface roughness of about 10
percent results in an RMS surface roughness of 400 nanometers.2 App. Br.
10. Appellant then contends that, assuming that RMS roughness is
equivalent to average surface roughness, Verhoeven discloses an average

1 Verhoeven defines relative roughness as 100 x Rq (RMS roughness)
divided by the thickness of the coating (T), and consequently thickness is
directly related to relative roughness.
2 Appellant performs this calculation using Verhoeven’s formula that
relative roughness (RMS) equals 100 x Rq / T, where T is the thickness of
the coating. Verhoeven paras. [0012], [0042].
Appeal 2009-012109
Application 10/413,827
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surface roughness of 400 nanometer, over five times higher than the claimed
range of less than 75 nanometers. Id.
As the Examiner correctly points out (Ans. 4), Appellant’s calculation
based on Verhoeven’s disclosure of a coating thickness of 4 micrometers
ignores Verhoeven’s additional disclosure of a dry coating thickness of 0.1
micrometers (100 nanometers). To explain why Appellant performed the
calculation using Verhoeven’s stent coating thickness of 4 micrometers
instead of 0.1 micrometers, Appellant argues that the thickness of 4
micrometers is “a reasonable measure of what can be expected” with
Verhoeven’s method. App. Br. 11. Verhoeven discloses a stent coating
thickness of 0.1 micrometers (Verhoeven paras. [0011], [0020]), and
Appellant fails to present a convincing reason for ignoring this explicit
disclosure in an issued patent.
A coating thickness of 0.1 micrometers and a relative surface
roughness of 10 percent results in a RMS surface roughness of 10
nanometers.3 Further, the Examiner found, and Appellant does not contest,
that surface roughness expressed in terms of RMS is generally equal to or
slightly higher than average surface roughness. Ans. 5. Consequently,
Verhoeven’s disclosure of a RMS surface roughness of 10 nanometers is
equal to or great than an average surface roughness of 10 nanometers, within
the range of less than 75 nanometers called for in claim 6. Because the
Examiner found (Ans. 4), and we agree, that Verhoeven discloses a coating
having an average surface roughness within the claimed range of less than
75 nanometers, claim 6 is anticipated by Verhoeven. Consequently, we
affirm the rejection of claims 1-3, 5-8, 10, 27, and 28 on this basis. See In re

3 Calculated using the formula at Verhoeven, para. [0042].
Appeal 2009-012109
Application 10/413,827
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Fracalossi, 681 F.2d 792, 794 (CCPA 1982) (anticipation is the epitome of
obviousness).
Even if Verhoeven did not disclose a coating having an average
surface roughness as called for in claim 6, we conclude that such would have
been obvious in view of Verhoeven.
Appellant argues that the burden did not shift to Appellant because the
Examiner did not establish that Verhoeven and the subject matter of claim 6
are substantially the same. App. Br. 12-13 (citing as support for this
standard to Ex Parte Phillips, 28 USPQ2d 1302 (BPAI 1993). We disagree.
First, routine Board decisions, such as Phillips, are not binding on the
Board.4 Second, because it is uncontested that the only difference between
the prior art (Verhoeven) and the subject matter of claim 6 is a difference in
the range of a particular variable (average surface roughness), the Examiner
has established a prima facie case of obviousness. See, e.g., In re Peterson,
315 F.3d 1325, 1329 (Fed. Cir. 2003). Consequently, Appellant must show
that the particular range is critical, generally by showing that the claimed
range achieves unexpected results relative to the prior art range. In re
Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990).
Appellant argues that the Specification describes the “dramatic and
surprising end result” of decreasing average surface roughness from 142 and
77 nanometers for existing stents, to 2.35 and 16.3 nanometers for the
claimed stent. App. Br. 12 (citing Spec., para. [0041]5). To the extent that

4 See Board of Patent Appeals and Interferences Standard Operating
Procedure 2 (Revision 7) Publication of Opinions and Binding Precedent
(Mar. 23, 2008) (available at http://www.uspto.gov/web/offices/dcom/bpai/
sop2.pdf).
5 Based on the content of the argument, it appears Appellant intends to refer
to paragraph [0039] of the Specification, not paragraph [0041].
Appeal 2009-012109
Application 10/413,827
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this is an argument that the claimed range of an average roughness of less
than 75 nanometers is critical, we are unpersuaded by this evidence.
This evidence relates to an average surface roughness of 2.35 and 16.3
nanometers while, in contrast, claim 6 calls for a coating having an average
surface roughness of less than 75 nanometers. Consequently, Appellant’s
argument is not commensurate in scope with claim 6. Appellant has not
demonstrated the criticality of the claimed range of less than 75 nanometers.
Appellant also asserts that the Examiner’s conclusion of obviousness
is based on an erroneous finding of fact. Ans. 4-5; Reply Br. 7-8.
Specifically, Appellant asserts that a relative roughness of 0 percent is a
physical impossibility, and consequently, the Examiner’s finding that
Verhoeven’s disclosure of a relative surface roughness of “at most 25
percent” is disclosure of a relative surface roughness range of 0 to 25 percent
is in error. Our analysis, as well as the Examiner’s, is not based on a finding
that Verhoeven discloses a relative surface roughness of 0 percent; rather,
the analysis is based upon a finding that Verhoeven discloses a relative
roughness for a stent coating of 10 percent, a fact conceded by Appellant.
Ans. 4; App. Br. 10; Verhoeven para. [0010], [0020]).
Thus, the subject matter of claims 1-3, 5-8, 10, 27, and 28 was
obvious over Verhoeven.
Claims 4 and 9
Claims 4 and 9, which depend from independent claims 1 and 6,
respectively, each call for a coating thickness of 1 to 150 nanometers and an
average surface roughness of less than 75 nanometers.
Appellant argues that Verhoeven discloses relative roughness of about
10 percent so that a coating with a thickness of 1 nanometer would have a
RMS roughness of 100 nanometers, which exceeds the range called for in
Appeal 2009-012109
Application 10/413,827
8
claims 4 and 9. App. Br. 13, 15-16. As explained in the analysis of claim 6,
supra, Appellant does not contest the Examiner’s finding that surface
roughness expressed in terms of RMS is generally equal to or slightly higher
than average surface roughness. Ans. 5. Consequently, Verhoeven’s
disclosure of a RMS surface roughness of 100 nanometers is equal to or
slightly higher than an average surface roughness of 100 nanometers.
Because it is uncontested that the only different between the prior art
(Verhoeven) and the claimed subject matter is the range of a particular
variable (average surface roughness), the Examiner has established a prima
facie case of obviousness. See In re Peterson, 315 F.3d at 1329; see also
Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985) (a
prima facie case of obviousness exists when the claimed range and the prior
art range do not overlap but are close enough such that one skilled in the art
would have expected them to have the same properties). Consequently,
Appellant must show that the particular range is critical. As explained in the
analysis of claim 6 supra, Appellant has not met this burden because
Appellant’s evidence is not commensurate in scope with the claimed subject
matter.
Accordingly, we sustain the rejection of claims 4 and 9.
CONCLUSIONS
Verhoeven discloses or renders obvious a stent coating having an
average surface roughness of less than 75 nanometers as called for in claim
6.
Appellant has not demonstrated the criticality of the surface roughness
range of claim 6.
Appeal 2009-012109
Application 10/413,827
9
A stent coating having a thickness of 1 to 150 nanometers and an
average surface roughness of less than 75 nanometers as called for in claims
4 and 9 would have been obvious in view of Verhoeven.
DECISION
We affirm the Examiner’s decision to reject 1-10, 27, and 28.

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

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